WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hachette Filipacchi Presse v. Full Access Sàrl
Case No. DCH2012-0023
1. The Parties
The Claimant is Hachette Filipacchi Presse of Levallois-Perret, France, represented by ipSO société (selàrl) d’Avocats au Barreau de Paris, France.
The Respondent is Full Access Sàrl of Bussigny-près-Lausanne, Switzerland, represented by del Boca Burnet Luciani & Cerottini, Switzerland.
2. Domain Name
The dispute concerns the domain name <elle-agency.ch>.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2012(“Request”). On July 31, 2012, the Center transmitted by email a request for verification in connection with the disputed domain name to SWITCH, the “.ch” and “.li” registry. On July 31, 2012, SWITCH transmitted to the Center its verification response by email, confirming that the Respondent was listed as holder of the domain name. SWITCH, at the same time, provided the relevant contact details. On August 2, 2012, SWITCH corrected the registry date of the disputed domain name to be June 24, 2010. SWITCH also informed the Center by email dated August 7, 2012, that English was the language of the registration agreement.
The Center verified that the Request satisfied the formal requirements of the Rules of Procedure for dispute resolution proceedings for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request. The dispute resolution proceedings commenced on August 21, 2012. In accordance with the Rules of Procedure, paragraph 15(a), the due date for the Response was September 10, 2012, at which time Respondent did file a Response.
On October 26, 2012, the Center appointed Bernhard Meyer as Expert in this case. The Expert found that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the Expert further declared his independence of the parties.
4. Factual Background
The Claimant is the owner of the trademark ELLE with the following international registrations under the Madrid Protocol pertaining to Switzerland (article 9sexies):
- N°292 472, dated December 28, 1964, in international classes 02, 03, 04, 05, 08, 09, 11, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41 and 42;
- N°657 541 dated May 05, 1995 in international classes 09, 16, 35, 38, 39, 41 and 42;
- N°731 669 in international class 38.
The trademark ELLE is used by Claimant in connection with the publication of a widely known French fashion magazine “ELLE”, existing since 1945. The ELLE magazine developed over the years into a series of lifestyle and fashion magazines such as ELLE DECORATION, ELLE A TABLE, ELLE GIRL, ELLE DELUXE, ELLE A PARIS, ELLE TOP MODEL etc. Besides that, the trademark is being used for a wide range of goods and services in the fields of fashion, lifestyle and gastronomy, for example.
The Claimant also registered several domain names such as <elle.ch>, <elle.li>, <elle.fr>, <elle.com>, <elle.de>, <elle.it>, <elledecoration.ch>, <elleatable.ch>, <ellegirl.com>, <ellegirl.net>, <ellegirl.be> and <elle.co.uk>.
The Respondent registered the disputed domain name on June 24, 2010. It is linked to the website “www.lady-escort.ch” which contains adult content and escort-girl services in Lausanne, Switzerland.
5. Parties’ Contentions
The Claimant objects to the use of the disputed domain name by Respondent, basing its Request on the following grounds:
(i) Claimant has rights in a distinctive sign under the laws of Switzerland.
By virtue of its three international trademark registrations, pertaining to Switzerland, Claimant has an exclusive right for the term ELLE in this country. According to the Claimant, the ELLE magazines all over the world have developed into 43 local editions, totaling 6.5 million copies and 60 million readers.
Furthermore, the ELLE trademark has been and is being used for identifying sister publications on women issues, lifestyle issues as well as for a wide range of non-print goods and services in connection with the above (e.g. clothes, shoes, jewelry, cell phones, hair accessories, watches, eyewear, bags, cosmetics, perfumes, home linen, candles, wines, cars, rollers, cycles, roses etc.). In such a way, customers are used to see the ELLE trademark in connection with topics of fashion, beauty and lifestyle. According to Claimant, its worldwide turnover from the publishing and licensing business related to the trademark ELLE amounted to Euro 873,3 million in 2009. The advertising expenses relating to this brand totaled Euro 34.92 million in 2009 (see annex 4 to the Request). The Claimant further maintains that the ELLE trademark enjoys strong media coverage, not only through the press but also through multiple websites incorporating the word “elle” in their domain names. The Claimant concludes that the trademark thus has become a worldwide famous brand and underlines that the French, German and Italian editions of the ELLE magazine are also widely sold in Switzerland (see annex 11-14 to the Request).
(ii) The registration and/or use of the disputed domain name infringes the Claimant’s right in a distinctive sign under the laws of Switzerland or Liechtenstein.
The Claimant alleges that the disputed domain name “elle-agency.ch” directly incorporates the Claimant's trademark ELLE. According to the Claimant, the word "agency" in the domain name, being generic in nature, as well as the hyphen between ELLE and the word "agency", as well as the ccTLD suffix ".ch", do not sufficiently distinguish the disputed domain name from the Claimant's trademark.
The Claimant admits that the requirements of article 3 paragraph 1 and article 13 paragraph 2 of the Swiss Trademark Act (“TMA”) are not fulfilled because the goods and services in question are neither identical nor similar. While the Claimant carries out a publication and fashion business, the Respondent runs an escort-girl agency. But Claimant points out the wider protection of article 15 paragraph 1 TMA. The Claimant contends that its trademark ELLE satisfies the requirements for a famous trademark and that, therefore, the use of the trademark by any third party, on any type of products or services, even on noncompeting, is prohibited.
The Respondent does not contest the fact that the Claimant has a right in a distinctive sign under the law of Switzerland. But it alleges that the signs at stake may not be considered as similar. In the Respondent's view, a word as general as ELLE, has a weak significance and the addition of the term "agency" in the domain name itself enables potential users to immediately exclude any likelihood of confusion with the Claimant's trademark.
Furthermore, the Respondent maintains that the Claimant cannot claim a monopoly for the word “elle”. While Respondent is willing to accept that the trademark ELLE enjoys a strong reputation with respect to the magazines distributed by the Claimant under this trademark, no such reputation exists for other categories of products or services. Respondent also contests that the ELLE trademark is famous in Switzerland. It requests that the expanded scope of protection pursuant to article 15 TMA shall be denied to the trademark ELLE.
The Respondent then draws the Expert's attention to the fact that the activities carried out over the Respondent’s website are remote from the Claimant's list of products and services. Thus, it is unconvincing in the Respondent’s view that the Respondent should have tried to take advantage of the Claimant's trademark to attract Internet users to its website for commercial gain. Finally, the fact that the disputed domain name is automatically redirected to the domain name <lady-escort.ch> and the specific layout of this webpage, displaying the term “elle” in a different graphical design and combined with a butterfly, should make it impossible for any users of the webpage to associate it with the Claimant’s trademark. There is no justification for deleting the disputed domain name.
6. Discussion and Findings
According to the Rules of Procedure, paragraph 24(c), “the Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the laws of Switzerland”.
The Rules of Procedure, paragraph 24(d) specify that “a clear infringement of an intellectual property right exists when
(i) both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
(ii) the Respondent has not conclusively pleaded and proven any relevant grounds for defense; and
(iii) the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request”.
A. Does the Claimant have a right in a distinctive sign?
The Claimant did prove ownership in the trademark ELLE (see annex 7 to the Request) and this fact is uncontested.
B. Does the registration or use of the domain name constitute a clear infringement of the Claimant’s right under the laws of Switzerland?
The disputed domain name <elle-agency.ch> contains the Claimant's trademark ELLE in its entirety. It is clear that neither the component "agency" (a generic and descriptive term), nor the hyphen between ELLE and “agency”, are sufficient to distinguish this domain name from the trademark ELLE. The component “elle” clearly seems to be the dominant part of both signs. Thus, the first question which arises is whether the mere registration of the domain name <elle-agency.ch> constitutes an infringement of the Claimants’ right in the trademark ELLE under Swiss trademark law.
According to article 3, combined with article 13 paragraph 1 TMA, a trademark right affords its owner the exclusive right to use the trademark in relation to goods and services for which it has been registered. In general under Swiss law, the content of the website linked to the domain name is decisive when examining violations. However, the Swiss Federal Tribunal (the highest court in Switzerland) has decided that if a trademark is famous, a misleading domain name alone may be sufficient to establish a violation (BGer 4C.31/2004, 08.11.2004, = sic! 2005, 200, "RIESEN").
Thus, the second question which now arises is whether the ELLE trademark is famous and enjoys the wider protection under article 15 of the Swiss Trademark Act.
Article 15 TMA provides that the owner of a famous trademark may take action against others, using the trademark for all kinds of goods and services, if such use would jeopardize the distinctiveness of the famous trademark or would exploit or damage the reputation thereof. The legislator deemed famous trademarks not only worthy of protection, but also in need of protection. Famous trademarks are, by definition, famous in the general public. They are therefore susceptible to misuse by third parties and this is what diminishes or dilutes their value. For this reason, the Swiss trademark law prohibits third parties from taking unfair advantage of famous trademarks.
Strangely enough, the term "famous trademark" is neither defined by the Swiss Trademark Act nor further specified in any Swiss directives or guidelines. The status of a famous trademark is a question of fact. The Expert shall consider the information submitted but it may also base its judgment on publicly known facts.
Reviewing Swiss jurisprudence and doctrine one may conclude that the recognition of a “famous” character of a trademark is not easily to be assumed. Basically, the following factors were considered (see BGer 4A_128/2012, 07.08.2012, "Vogue"; BGE 128 III 146 "Audi"; BGE 124 III 277 "Nike"; BGE 116 II 463 "Coca Cola"; BGE 130 III 748, "Nestlé"; Philippe Gilliéron, in: Jacques de Werra (Ed.), Marques notoires et de haute renommée / Famous and Famous Trademarks, Zurich 2011, p. 37-72; Gregor Bühler, Protection of famous trademarks, in: IP Value 2007, Homburger, p. 230-232):
- the trademark’s high level of recognition in the Swiss public,
- its strength in advertising,
- its important financial value in different fields, and
- its distinctiveness and uniqueness.
The owner of the trademark bears the burden of evidence for the trademark having been famous when the alleged infringement began.
The Claimant provided the Expert with impressive figures concerning world wide publication, sales and licensing activities that are carried out under the trademark ELLE. However, the Claimant failed to submit a systematic market analysis concerning the degree of knowledge of the trademark ELLE by the Swiss public. Subject to rare exceptions, the situation outside of Switzerland is not taken into account when establishing the recognition of a trademark in this country. To enjoy the added protection of article 15 TMA, a trademark must be proven to be famous in Switzerland. Particularly with regard to the Swiss territory, the Claimant produced exportation sales sheets and alleged the following (pages 8 and 9 of the Request):
distribution and exposure of the French ELLE magazine in Switzerland: 313,577 copies sold in 2008; 303,771 copies sold in 2009; 311,895 copies sold in 2010; and 145,092 copies sold until June 2011;
distribution and exposure of the German ELLE edition in Switzerland: 72,831 copies sold in 2009; 91,085 copies sold until June 2011;
regarding the Italian ELLE edition in Switzerland: the Claimant also claims substantial sales to Switzerland, without giving exact figures.
While the above numbers certainly are impressive, they do not prove the Claimant’s point that the ELLE trademark is famous in Switzerland. According to Swiss case law, a percentage of more than 50% of the Swiss population must know the trademark in order for the latter to qualify as being "well known" (Philippe Gilliéron, l.c., N 30; BGer 4C.31/2004, 08.11.2004 c. 3.3; sic! 2005 p. 200, 201: for example public awareness of the trademark RIESEN of 46% across the country was deemed to be insufficient by the Swiss Federal Tribunal). Thus, when comparing the above sales figures (which may, of course, not be representative for the general knowledge of the trademark by the Swiss public) with an estimated 8 million inhabitants in Switzerland (see Swiss Federal Statistical Office, Press Releases, August 2, 2012), there is serious doubt in the Expert’s view, that the 50% threshold has been met. Moreover, the Claimant failed to provide the Expert with any evidence regarding the public awareness of the ELLE trademark in other areas than in the publication field. It is worth noting that none of the domain names held by the Claimant in Switzerland in other areas than publication, i.e. <elledecoration.ch> and <elleatable.ch>, are currently active. Hence, the ELLE trademark in other business lines than ELLE publications doesn't seem to be strongly advertised and supported in Switzerland.
As to the distinctiveness and uniqueness of the trademark ELLE it must also be said that “elle” is the pronoun for “she” in the French language. As such, it has a rather low uniqueness and recognition value, particularly in the French part of Switzerland, where the Respondent is located. Under these circumstances, empirical data and evidence for the fact that the term “elle” is widely recognized as the Claimant’s trademark in Switzerland would have been required even more.
Under the specific circumstances at hand and for the purpose of this proceeding, the Expert has no other choice than to conclude that the evidence for ELLE as a famous trademark in Switzerland is lacking and, thus, the extended scope of protection of article 15 TMA to other categories of goods and services than the ones for which it was registered must be denied.
Having concluded that ELLE has not been proven to be a famous trademark in Switzerland, the third question to be examined is whether the use of the disputed domain name constitutes an infringement of the Claimant’s right under the Swiss law, and whether in this regard, the Respondent offers on its website a similar or identical category of goods or services for which the Claimant trademarks are registered.
In this connection, it is relevant that the Claimant itself acknowledges that the goods and services for which it claims trademark protection are completely different from the services offered through Respondent's website. Respondent runs an escort-girl agency. Such services may be registered under Nice class 45 (dating services) for which the ELLE trademark has no registration. Furthermore, the customers that the Claimant addresses with its publications are mostly women (77%, see annex 3 to the Request). Respondent, on the other hand, is targeting primarily men. Thus, it comes as no surprise that none of the Claimant's print products or related services are found on Respondent's website and it seems unlikely that Respondent in any way tried to use or abuse the good reputation of the Claimant’s ELLE trademark for its business. Rather, the only common ground in the parties’ respective marketing strategies seems to be that the French generic term “elle” (English “she”) is being used in the disputed domain name. But the content and layout of Respondent’s website will quickly resolve any misapprehension should a customer of the Claimant by error click on Respondent’s webpage.
As a result of the above, the Expert finds that the existence and infringement of the claimed right in a distinctive sign has not been proven by the Claimant’s evidence submitted in this particular case. Furthermore, in the Expert’s opinion the registration or use of the disputed domain name does not constitute a clear infringement of the Claimant’s right in a distinctive sign in Switzerland and the Respondent has conclusively pleaded and proven relevant ground for defence.
7. Expert Decision
For the above reasons, the Request is denied.
Dated: November 9, 2012