Complainant is 1 Model Management, LLC., New York, New York, United States of America, represented by the law firm McCue Sussmane & Zapfel, P.C., United States of America.
Respondent is L.A.S. Inc., Latifa Aadess, 1 Models LLC, Huntington Beach, California, United States of America. Latifa Aadess has submitted a Response.
The disputed domain name <onemodels.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2008. On August 1, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On August 1, 2008, Intercosmos Media Group d/b/a directNIC.com 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 August 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2008. The Response was filed with the Center on August 31, 2008.
Complainant requested a single-member panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Richard G. Lyon, Stefan Naumann, and Lynda J. Zadra-Symes as panelists in this matter on October 17, 2008.
The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of 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.
Complainant is a modeling agency that represents models and books them on assignments with fashion designers and providers of cosmetic and other beauty products. Complainant alleges that it is “one of the largest and most prestigious modeling agencies in the United States,” representing top models and making “only the highest caliber” bookings.1 Complainant's principal website is “www.1modelmanagement.com”.
In May 2007, Complainant filed applications to register ONE MODEL MANAGEMENT, ONE MODEL, and 1 MODEL MANAGEMENT with the United States Patent and Trademark Office (USPTO). These applications claim a first use in commerce of December 2001 and are currently pending before the USPTO.
Respondent established a limited liability company named “1 Models, L.L.C.” in December 2001. Through another company, L.A.S. Inc., it registered the disputed domain name in August 2002, and since that time has used the domain name to provide portfolio space for models and aspiring models. Any person may register at Respondent's site and upload a portfolio with a cover photograph. This service, which Respondent asserts is made available without charge to the model, affords the model exposure to facilitate prospective employment or assignments.
Complainant sent Respondent a cease-and-desist letter in December 2007, to which Respondent did not reply.
Complainant has rights in its trademarks by reason of its use of them for modeling services since Complainant's establishment in 2001. The disputed domain name is confusingly similar to these marks.
Respondent lacks rights or legitimate interests in the disputed domain name. Its use of the domain name, said to have “begun subsequent [sic] to the establishment of Complainant's marks and website,” is not legitimate or bona fide because of the domain name's similarity to Complainant's marks. Respondent's services and name are “similar in appearance to Complainant's.” Respondent's models are “amateurs” who often pose in sexually suggestive positions. Using a name and website intentionally similar to Complainant's marks misleads consumers into believing Respondent is affiliated with or authorized by Complainant.
These facts also illustrate bad faith in registration and use. Respondent misleads the public into believing that it competes with Complainant. Furthermore, at one point Respondent used the ® symbol (indicating a registered trademark) after the phrase “ONE MODEL, THE PLACE TO BE” on the website at the disputed domain name. After receiving Complainant's cease-and-desist letter the symbol was removed, but Respondent failed to respond to the cease-and-desist letter.
Respondent contends as follows:
Complainant lacks rights in any of its claimed marks, having filed for registration “for the sole purpose of initiating this dispute.” Respondent does not compete with Complainant and has never advertised that it does; and “Respondent is simply a listing directory and not a management company.”
Respondent has rights in the disputed domain name by reason of its registered corporate name “1 Models L.L.C.” and continuous use of its website for a legitimate business since 2002.
When Respondent registered the disputed domain name in 2002, Complainant had no trademark rights or, at the very least, has demonstrated none. Respondent has never competed with Complainant and has never claimed any association with it. There is thus no evidence of registration or use in bad faith. The charge of misuse of the ® symbol is untrue.
Complainant took no action regarding Respondent for five years after Respondent's registration and continuous use of the disputed domain name, instead waiting until Respondent's site was growing and becoming popular. This proceeding is an attempt to “steal a legitimate name” and therefore Respondent is entitled to a finding of Reverse Domain Name Hijacking.
The requirements of paragraph 4(a) of the Policy are conjunctive. From the face of the Complaint Complainant has clearly failed to establish two Policy elements, the Complaint must be denied.
There is no evidence and barely an allegation that when Respondent registered the disputed domain name in 2002, it was or should have been aware of Complainant or Complainant's then-fledgling business and marks. Complainant offers no evidence of its business's or marks' renown at that time. Such evidence, if it exists, is within Complainant's control and could have been provided (see Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). The record before the Panel indicates that in 2001-2002 Complainant had not registered the marks with any government authority, and indeed had only been in existence for less than one year. Had Respondent searched the USPTO data base before registering the disputed domain name, it would have found nothing. The phrase common to Complainant's marks and Respondent's corporate name and the disputed domain name “one model” consists of everyday words and to a certain extent is descriptive of each party's business. There is no factual basis in the record from which the Panel could infer actual knowledge or otherwise believe that Respondent chose these words or its corporate name for any reason other than their common English meaning.
Furthermore, the Complaint includes an acknowledgment that Respondent had been using the disputed domain name in conjunction with an active business for five years prior to commencement of this dispute and that Respondent has been commonly known in its business by the name “1 Models.” Respondent's business (which is not pay-per-click or “parked” pages) is not obvious cybersquatting, and the evidence submitted with the Complaint (and that viewed by the Panel through the Wayback machine) indicates no imitation or copying or passing off.
Unless this entire usage has been tainted for some reason, Respondent comes within either or both of the safe harbors of paragraphs 4(c)(i) and 4(c)(ii) of the Policy. Toilets.com, Inc. v. Porta-Jon of the Piedmont, WIPO Case No. D2008-1043; and Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033. In such circumstances, Complainant's burden under paragraph 4(a)(ii) is especially heavy, Porta-Jon, supra. All Complainant has offered to oust Respondent from the Policy safe harbors is its counsel's pleading of a desired legal conclusion that, from the start, Respondent tried to ride free on the goodwill of Complainant's marks. As noted in the preceding paragraph, all the available proof and all the probable inferences are to the contrary.
When, as here, the face of the complaint includes facts that demonstrate no likelihood of success, the respondent is entitled to a finding of Reverse Domain Name Hijacking. The case for such a finding is especially compelling here given Complainant's almost total lack of proof on any Policy element2 and Complainant's inaction for five years. Complainant is represented by counsel and should be aware of the Policy's requirements and Policy precedent. The Panel believes that on the allegations pled in the Complaint there was no basis for Complainant's counsel's certification, required by paragraph 3(b)(xiv) of the Rules that “the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.
The Complaint is denied, and the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking and primarily to harass the domain-name holder. As such, it constitutes an abuse of this administrative proceeding. See Rules, paragraph 15(e).
Richard G. Lyon
Lynda J. Zadra-Symes
Dated: October 24, 2008
1 Complainant submits no evidence of this or in support of most of its factual allegations.
2 Complainant's proof (as opposed to counsel's allegations) of common law trademark rights in its ONE MODEL marks at any time is thin, consisting only of the assertion in its USPTO application of use in commerce since 2001, and might not suffice under paragraph 4(a)(i). See Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778.