WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elite Licensing Company S.A., Elite Model Management v. Mathias Baumgartner
Case No. D2007-1334
1. The Parties
The joint Complainants are Elite Licensing Company S.A. of Fribourg, Switzerland (the ”First Complainant”) and Elite Model Management of Paris, France, represented by Cabinet Degret, France (together the ”Complainants”).
The Respondent is Mathias Baumgartner of Hanoi, Vietnam.
2. The Domain Name and Registrar
The disputed domain name is <elitemodel.org> (the ”Domain Name”).
The Domain Name is registered with Moniker Online Services, Inc, part of the Moniker group (the ”Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 6, 2007. On September 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2007, 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 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”).
3.2 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 September 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2007.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 16, 2007. 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
4.1 The Complainants are part of the Elite group of companies which run the Elite model agency network. The Elite group has 3 main operations: “Elite Model Management” (model management across its agency network); “Elite Model Look” (model search events in 53 countries); and, “Elite Licensing” (“elite” branded goods and services sold under license).
4.2 The Elite group operates extensively under the ELITE brand and that brand is reported to have 31% (unaided) global brand awareness. The Elite group, and in particular the Complainants, own an extensive worldwide portfolio of trademarks containing the word “elite” in various forms.
4.3 The Elite model agency was established in 1972, has approximately 36 agencies across 5 continents, 750 models on its books, a 45% market share in the United States of America and Europe and a turnover of $100 million. It “discovered” and hired famous models including Claudia Schiffer, Cindy Crawford and Naomi Campbell.
4.4 According to the WHOIS search results, the Domain Name was registered on June 22, 2007, in the name of Mathias Baumgartner, and giving an address in Hanoi, Vietnam. The Complainants suggest that either Mr. Mathias Baumgartner of the York Group is behind the registration of the Domain Name or his identity has been misappropriated and used by the “true” Respondent to register the Domain Name. The Panel is not in a position to determine whether this is correct. However, where reference is made to the Respondent in this Decision, this is intended to be a reference to the person or entity behind the registration of the Domain Name, whether or not that person is Mr. Mathias Baumgartner of the York Group (if such an individual does in fact exist).
4.5 By at least August 2007 the Domain Name directed Internet users to a homepage showing a photograph of a woman’s torso under the heading “ELITE MODEL” and a copyright mark “© 2005”. The “About Us” page of the Domain Name website describes the business operated from the website as: “one of the worlds most prestigious and successful model networks. Elite Models represents most of the industry’s superstars, and is the undisputed leader in its field. … Elite has launched the careers of more superstars than any other agency in the world…” Further pages state that “Elite provides Models for television, glamour, catalogue and promotional work”. There are portrait photographs of women dubbed “An Elite Model” and a prominent statement, “call us to discuss your needs”. The “Contact Us” page invites persons “looking for the right face for [their] campaign, or professional management of [their] career as a model” to email <firstname.lastname@example.org> and states that “Existing clients can log in and use our online account management features”.
4.6 The Elite group’s lawyers wrote to the Respondent on August 24, 2007 using the email and postal address set out in the WHOIS search results. They also sent a copy of that letter to the email address for Mr. Baumgartner that the Complainants had found on the York Group website. In the letter the Elite group alleges trademark infringements by the Respondent in registering the Domain Name and in using it for a website “presenting the services of a model agency and pretending to belong to the ELITE model agency network”. No response was received to that letter.
4.7 As at the date of this decision the form of the website at the Domain Name has changed. Instead of resolving to an apparent modelling site of some sort, it resolved instead to a generic domain maintenance message site (apparently powered by Google) that states “You are seeing this page because the current domain is not configured in the current set of name servers or your domain is being parked. This is usually just a temporary error while the domain is being added. Once the domain is configured this page will expire and your correct site will be shown”.
5. Parties’ Contentions
5.1 The Complainants submissions can be summarized as follows:
Identical or Confusingly Similar
5.2 The Elite group and primarily the First Complainant are said to own numerous worldwide registered word and design trademarks incorporating the word “elite” designating model and model agency services, organization of competitions, etc. The Complainants provide a spreadsheet (running to some 19 pages) providing some details of these marks and print outs from the World Intellectual Property Office’s Madrid trademark database in relation to 3 trademarks registered in the 1990s in (amongst other countries) Vietnam.
5.3 The Complainants claim that they have “very strong common law protection in their unregistered ELITE trademarks in the relevant Common Law jurisdictions” and they have extensively used the ELITE mark (including via their domain names and websites <elitemodel.fr> and <elitemodel-world.com>). They also provide details and cite case law from the English courts and OHIM regarding the elements of the English law tort of passing off.
5.4 The Respondent is said to have “totally misappropriate[d] the Complainants’ ELITE trademarks… and [on the website operating from the Domain Name] represents itself as being the “Elite Model Agency”, i.e. the world-famous international model agency network”. As a result of this the public “will necessarily succumb to the erroneous belief that the Respondent and its website are related to the Complainants”. (Complainants’ emphasis).
5.5 The only differences between the Domain Name and the Complainants’ ELITE marks is the suffix “.org” and the generic/descriptive term relating to the field in which the Complainants operate and are famous, i.e. models. In this respect, some of the Complainants marks include the word “model”. Further, where, as here, a trademark has been incorporated in its entirety into a domain name that is sufficient to establish that domain name is identical or confusingly similar to the complainant’s trademark ( WIPO Case No. D2000-0253 (Quixtar Investments Inc. v. Dennis Hoffman) and WIPO Case No. D2004-0668 (Qsoft Consulting Limited v. Bernard Lynch D/B/A/ Rainbow Globe)). The Complainant also cites numerous UDRP cases as authority for the proposition that use of a “generic term” in a domain name does not negate the likelihood of confusion ( WIPO Case No. D2003-0709 (Red Bull GmbH v. Chai Larbthanasub), WIPO Case No. D2000-0137 (Expedia, Inc v. European Travel Network), WIPO Case No. D2001-0329 (Expedia, Inc v. European Travel Network) WIPO Case No. D2004-0831 (Meon Travel Limited v. Lawrence Snare), WIPO Case No. D2004-0478 (ACCOR v. Park Junghee) and WIPO Case No. D2005-0691 (Société des Hôtels Méridien v. Mr. Bekir Dogan)).
5.6 In conclusion, the Complainants assert that the “addition of the term model, which is a generic/descriptive term relating to the field of activity in which the Complainants operate and which is furthermore (even) comprised in several of the Complainants’ trademarks, does not avoid the confusion but, on the contrary, is likely to enhance it and lead the public to believe that the disputed domain name is linked to, affiliated with, or at least endorsed by the Complainants”. Therefore the Domain Name is confusingly similar to the ELITE trademarks in which the Complainants have rights, according to the Rules para. 3(b)(ix)(1).
Rights or Legitimate Interests
5.7 The Complainants claim that the Respondent has and is not using the Domain Name for a bona fide offering of goods or services nor does he make legitimate non-commercial or fair use of the Domain Name.
5.8 The Complainants assert that the Respondent has never been and is not currently commonly known by the Domain Name “since the denomination ELITE associated with the word MODEL (in the area of model and model agency services) is solely associated with the Complainants”. Further, the Complainants submit that they have not authorised the Respondent to use their ELITE trademarks.
5.9 The Complaint states that the Domain Name diverts Internet users looking for the Complainants’ business to the Respondent’s own website. The Respondent’s website describes a “model agency” and misrepresents that business as being the Complainants’ own Elite model agency. The Respondent is thereby said to infringe the Complainants’ trademark rights and gravely prejudice the Complainants’ reputation. The Complainants claim that the Respondent must have known of the Complainants and that he was registering a domain name infringing the Complainants’ rights because he “tries to impersonate them”. The Respondent’s registration is also said to prevent the Complainants from making use of the Domain Name themselves.
Registered and Used in Bad Faith
5.10 The absence of a legitimate interest and the presence of bad faith are said in this case to be linked and the Complainants rely on their submissions above to demonstrate the Respondent’s bad faith. The Complainants claim that “even if the Respondent failed to conduct appropriate searches before registering the Domain Name, it is highly unlikely that he would have been unaware of the Complainants’ pre-existing rights when registering the disputed domain name”.
5.11 According to the Complainants’ case, the Respondent has intentionally attempted to attract, for commercial gain and for an infringing purpose, Internet users to his website, by creating a likelihood of confusion between the Complainants’ trademarks and the Domain Name and corresponding website.
5.12 Further, the Complainants contend that the Respondent registered and has used the Domain Name to benefit unfairly from the reputation of the Complainants and their trademarks.
5.13 Therefore the Complainants conclude that the Domain Name has been registered and used in bad faith.
5.14 The Respondent did not reply to the Complainants’ contentions and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules. The Panel considers the implications of this below.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within Paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainants to make out its case in all respects under the Rules set out in Paragraph 4(a) of the Policy. Namely, the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.4 However, under Paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.5 The Complainants have provided a list of numerous registered trademarks, which appear (from the spreadsheet provided) to contain the word “elite” and frequently further words including “model” and to belong to the Complainants (or other Elite group companies). The Complainants’ have not provided copies of trademark certificates or print-outs from publicly accessible trademark databases with respect to all of these marks. Instead they have provided what appear to be database print-outs in relation to three specific Madrid Agreement international registrations that they state to be the “relevant international trademarks of the Complainants” and upon which they appear to primarily rely for the purposes of these proceedings. These marks are as follows:
(i) International Registration No. 663732 for a design mark that incorporates the words ELITE MODEL LOOK;
(ii) International Registration No. 693264 for the word mark ELITE MODEL LOOK; and
(iii) International Registration No. 662469 for the word mark ELITE MODELS FASHION.
6.6 Each of these three marks pre-dates the Domain Name registration and is registered in the name of the First Complainant. A number of different countries are designated in relation to each of these marks, which include in each case Vietnam. The registrations are in various classes for goods and services that range from vehicles, entertainment and games to jewellery, condiments and perfumery, but not modelling or model agency services.
6.7 Why the Complainants focus on these three marks is not entirely clear, but it appears to be because these are the marks which have been registered in Vietnam, the state in which the Respondent appears to be domiciled. Indeed, these are the specific marks that the Complainants identified in their letter before action in August 2007 to the Respondent.
6.8 In fact, the location of a registered trademark is irrelevant when considering whether there are rights in a mark (see 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Given this, usually the best course for a complainant is to simply identify those of its marks wherever they are registered which it claims to have the greatest similarity to the domain name in dispute.
6.9 If these were the only marks upon which the Complainants rely, it would be necessary for the Panel to examine to what extent the Domain Name is confusingly similar to those marks. However, the Complainants in this case do not just rely upon their registered trademark rights. They also submit that they have unregistered rights in the ELITE mark “in the relevant jurisdictions” and then give a lengthy description of the tort of passing off in English law.
6.10 It is well established that “rights” for the purposes of Paragraph 4(a)(i) of the Policy include “unregistered trademark rights” insofar as they are recognised in a relevant jurisdiction. Also it has frequently been held in UDRP decisions that where a complainant has sufficient goodwill in England associated with a name that would permit it to bring proceedings under the English law of passing off, that is sufficient to provide relevant unregistered trademark rights for the purposes of the Policy.
6.11 The slight difficulty in this case is that there is nothing in the text of the Complaint that specifically addresses the question of what reputation the Complainant has developed in England and Wales. There are frequent references to the Complainants’ world wide reputation but no description of the extent of its activities in the United Kingdom. As this Panel has already stated in a number of previous decisions (for example, Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969) it is important that where a complainant claims unregistered trademark rights, that it properly identifies not only the jurisdiction or jurisdictions in which those rights are claimed, but also provides specific evidence as to how it is those rights have arisen in the jurisdiction chosen.
6.12 Nevertheless, the Panel does not think that there is any real doubt in this case that the Complainants have unregistered rights in the name ELITE to at least some degree in England. The Complainants’ assertions as to world wide fame are not contested. The Complainants also contend that their modelling agency is renowned for the “global stars” on its books. From the material appended to the Complaint these stars would appear to include such well known names as Claudia Schiffer, Cindy Crawford, Naomi Campbell and Linda Evangelista. These individuals are well known in the United Kingdom. Further, in the extensive marketing documentation of the Complainants to be found at Annex 7 of the Complaint is what appears to be a description of results of a survey as to “elite brand awareness”. This describes “awareness for buying intentions” in the United Kingdom to be 71%. The Panel is therefore satisfied in the absence of any evidence or contentions to the contrary that the Complainants have unregistered rights in the ELITE name for the purposes of the Policy.
6.13 The Panel also has little difficulty in this case in concluding that the Domain Name is confusingly similar to these unregistered rights. The Domain Name is the word “elite” with the word “model” and the suffix “.org”. The word “model” is an ordinary word that describes the pre-dominant business activities of the Complainants and it is in respect of these activities that the ELITE name is known.
6.14 Accordingly, the Panel concludes that the Complainants on the basis of their unregistered trademark rights in England have made out Paragraph 4(a)(i) of the Policy. Given this finding, it is not necessary to consider whether the Domain Name is also confusingly similar to the registered trademarks upon which the Complainants rely.
B. Rights or Legitimate Interests
6.15 Here, the Domain Name comprises the phrase “elite model” and (at the time of the Complaint) linked to a website that prima facie describes a model agency business that is doing business under the “Elite Model” and “Elite” names. Some care appears to have gone into producing this website and on its face it does appear to be a genuine modelling agency business.
6.16 There are however, a number of strange aspects to this website. Whilst the business trades under the “Elite Model” name, there is no description of the exact legal status of that entity. There is a contact page on the website, but this merely takes the form of a log-in page and the only direct contact details provided is the email address “email@example.com”. Certainly, the website is not what one would expect of what the Respondent claims (on that website) to be “one of the worlds most prestigious and successful model networks”.
6.17 The website also asserts that the Respondent’s agency “represents most of the industry’s superstars, and is the undisputed leader in its field. … Elite has launched the careers of more superstars than any other agency in the world…”. The Panel has seen no evidence to support these assertions and they seem so implausible that the Panel concludes for the purposes of these proceedings that these statements are simply not true.
6.18 Therefore, if this is a genuine business then the Panel accepts, as the Complainants contend, that the Respondent is attempting through the use of the “Elite” name and by means of these statements on its website to impersonate the Complainants. Use of a domain name associated with the business of a company engaged in the same field with a view to impersonating that company, cannot provide rights or legitimate interests for the purposes of the Policy.
6.19 Accordingly, in the absence of any explanation from the Respondent in relation to its activities, the Panel concludes that the Complainants have made out their case under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.20 The Panel accepts the Complainants’ submission that the questions of legitimate rights or interests and bad faith are entwined in this case.
6.21 As the Panel explains above, it would appear from the website linked to the Domain Name, that the Respondent has sought to misrepresent its business as being associated with, or the same as, the Complainants’ business. Further, the undisputed worldwide reputation of the Complainants’ business, the fact that Respondent appears to be engaged in the model agency business and the fact that the impersonating website came into existence very shortly after the Domain Name was registered, all strongly suggest that the Respondent was aware of the Complainants’ business at the time that the Domain Name was registered and that the Respondent registered the Domain Name with the impersonating use in mind.
6.22 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the complainant’s mark as to the source of a website. The activities of the Respondent in this case appear to fall squarely within this aspect of the Policy.
6.23 In the circumstances, the Panel concludes, in the absence of any evidence to the contrary, that the Respondent has both registered and used the Domain Name in bad faith. Accordingly, the Complainants have made out the requirements of Paragraph 4(a)(iii) of the Policy.
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, <elitemodel.org>, be transferred to the Complainants.
Matthew S. Harris
Dated: October 30, 2007