Complainants are Elite Licensing Company S.A., Fribourg, Switzerland; Elite Model Management, Paris, France; and, Elite Model Management S.A., Fribourg, Switzerland, represented by Cabinet Degret, France.
Respondent is Publicity Works, Cape Town, South Africa.
The disputed domain names <elitemanagementsouthafrica.com>, <elitemodelcapetown.com>, <elitemodelct.com>, <elitemodelmanagementcapetown.com>, <elitemodelsa.com>, <elitemodelscapetown.com>, <elitemodelsct.com>, <elitemodelsmanagementcapetown.com>, <elitemodelsouthafrica.com>, <elitemodelssa.com>, <elitemodelssouthafrica.com> are registered with Intercosmos Media Group d/b/a directNIC.com.
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 Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On October 2, 2008, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Publicity Works 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 Respondent of the Complaint, and the proceedings commenced on October 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 31, 2008.
The Center appointed Roberto Bianchi as the sole panelist in this matter on November 10, 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.
Complainants have contended the following facts and circumstances without opposition by Respondent:
– Complainants are part of the ELITE group of companies, and run the well-known ELITE model agency, established in 1972. This agency is one of the leading model agencies worldwide. It discovered and employed such models as Claudia Schiffer, Cindy Crawford, Karen Mulder, Nastassja Kinski, Naomi Campbell, and many more. The group has model agencies in about 40 countries.
– The ELITE model agency organizes every year the international ELITE Model Look contest.
– The ELITE group owns numerous trademarks consisting of or including the terms ELITE and MODEL or MODELS. Inter alia, the following trademarks an evidence thereof are relied upon by Complainants:
– French mark ELITE ELITE MODEL MANAGEMENT (stylized letters), Reg. No. 1,662,492, International Classes 35, 41 and 42, Reg. Date July 28, 1988, renewed and presently in force. Trademark owner is Co-Complainant Elite Model Management S.A.R.L.;
– French Mark ELITE (stylized letters), Reg. No. 07 3 489 294, Reg. Date March 20, 2007, International Classes 1 through 46. Expiry date March 19, 2017. Trademark Owner is Co-Complainant Elite Model Management S.A.R.L.;
– South-African mark ELITE ELITE MODEL MANAGEMENT & SERVICE, Reg. No. 97/8330, International Class 35 (modeling, i.e., recruitment and employment of models; modeling for advertising or sales promotion), Application Date June 4, 1997, Reg. Date October 3, 2001, Renewed on May 31, 2007. Owner is Elite Model Management S.A.
Respondent registered the disputed domain names on July 31, 2008.
Complainants contend as follows:
(1) The disputed domain names are confusingly similar to Complainants' marks.
(2) Respondent lacks rights or legitimate interests in respect of the disputed domain names. Respondent was not (and is not currently) using the disputed domain names for a bona fide offering of goods or services. In fact, Respondent is not using the disputed domain names at all. Respondent has never been and is not currently commonly known by the disputed domain names or any portion thereof, since the denomination ELITE associated with the word MODEL(S) is solely associated with Complainants. Besides, Respondent's name and trade name are “Andrew Farr” and “Publicity Works”. Complainants have never assigned, licensed, sold or transferred any rights in their ELITE trademarks to Respondent. Respondent does not make a legitimate non commercial or fair use of the challenged domain names, and instead, Respondent prevents the Complainants from making use of said domain names for their own offers. Respondent is active in the same field and is a competitor of Complainants, and cannot have ignored that he was registering domain names infringing on the rights of Complainants.
(3) Respondent has intentionally created a likelihood of confusion with the Complainants' trademarks, as to the source, sponsorship, affiliation or endorsement of these domain names and websites accessible there-under in the Internet users' minds. The mere fact that the disputed domain names are registered following the same terms as the ones belonging to Complainants (notably “elite” and/or “models”) constitutes in itself bad faith registration and use, as it demonstrates that Respondent has voluntarily registered domain names that he knows to be the property of another, of competitors of Respondent.
Respondent did not reply to Complainants' contentions, and is in default.
UDRP Panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, Complainants must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
With copies of the corresponding trademark certificates and other documents, Complainants have satisfied the Panel that Co-Complainant Elite Model Management S.A.R.L. has rights in the ELITE and ELITE ELITE MODEL MANAGEMENT French marks, and that Co-Complainant Elite Model Management S.A. has rights in the South-African mark ELITE ELITE MODEL MANAGEMENT & SERVICE.
A simple comparison between the identifiers demonstrates that the disputed domain names are confusingly similar to said marks. “Elite”, the relevant part of the marks, is present in each of the disputed domain names. The term “model” or its plural form “models”, present in two of the marks and in all of the disputed domain names with the exception of <elitemanagementsouthafrica.com>, refer univocally to, and reinforce the association of the relevant part “Elite” with, Complainants' field of business as a model agency. Finally, the term “management” is intimately related to Complainants' field of activity, i.e., managing models. Accordingly, the Panel finds that the domain name <elitemanagementsouthafrica.com> is confusingly similar to Complainants' ELITE ELITE MODEL MANAGEMENT & SERVICE mark, while the rest of the disputed domain names are confusingly similar to the ELITE and ELITE ELITE MODEL MANAGEMEN marks. Minor differences between the domain names and Complainants' marks such as the lack of spaces between terms and the addition of geographic names such as “South Africa” or “Cape Town” or their abbreviations, do not dispel the appearance of confusing similarity. See Grant Thornton International v. Martin Schmitz, WIPO Case No. D2006-1085 (“It is commonly known that technically the letters in domain names cannot be separated by spaces […]”); see also InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 (finding the mere addition of the word “India” insufficient to distinguish the domain name from the trademarks of the Complainant, as it appears to be made most likely to induce Internet users to believe that they are connecting with a site of an Indian affiliate or to some “Indian operation” of the Complainant).
Thus, the first element of the Policy is met in respect of each of the disputed domain names.
Complainants' contentions at 5.A.(2) above, and supporting evidence, taken as a whole, are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain names. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in a domain name.
Respondent has not presented the Panel with any comments or evidence in its own favor. Accordingly, the Panel considers that Complainants have satisfied Policy paragraph 4(a)(ii). See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “https://www.wipo.int/amc/en/domains/search/overview/index.html”.
According to Complainants' evidence, Respondent Publicity Works and its mentor and/or owner Andrew Farr appear to be active as a publicity and public relations agent for models and/or celebrities in South Africa. In other words, Respondent is a competitor of Complainants. Given that the ELITE marks, the Elite group of companies and their activities are well-known worldwide, it is more likely than not that Respondent knew of the previous existence of Complainants, the ELITE model agency, their activities and their ELITE marks at the time of registering the disputed domain names. Since Respondent failed to present any explanation for having registered eleven domain names containing the relevant part of Complainants' marks, the Panel concludes that the domain names were registered in bad faith.
There is no evidence that Respondent has ever used the domain names in web addresses or otherwise. However, beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, panels have considered that inaction, where a number of relevant factors reveal “passive use in bad faith”, can be evidence of bad faith registration and use.
In the instant case, the Panel considers that the following factors are present:
(a) Respondent is a competitor of Complainants in the field of publicity and management of models;
(b) Respondent simultaneously registered numerous domain names with small variations of Complainants' marks, with the apparent purpose of preventing Complainants from reflecting the ELITE marks in corresponding domain names; the eleven disputed domain names plus three ccTLDs equally containing Complainants' ELITE trademarks (<elitemodel.co.za>, <elitemodels.co.za> and <elitemodelmanagement.co.za>);
(c) In the present proceeding, Respondent failed to present any explanation whatsoever for its domain name registrations and lack of any use of the domain names;
(d) According to the tracking record of the elected courier, Respondent abandoned the packet sent by the Center with the notification of the complaint and the enclosed Complaint with Annexures. In other words, Respondent appears to have avoided participation in these proceeding.
Taken together, these circumstances strongly suggest that Respondent's behavior and passive use of the disputed domain names was and is in bad faith.
Therefore, the third element of the Policy is met.
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 names <elitemanagementsouthafrica.com>, <elitemodelcapetown.com>, <elitemodelct.com>, <elitemodelmanagementcapetown.com>, <elitemodelsa.com>, <elitemodelscapetown.com>, <elitemodelsct.com>, <elitemodelsmanagementcapetown.com>, <elitemodelsouthafrica.com>, <elitemodelssa.com>, <elitemodelssouthafrica.com> be transferred to Co-Complainant Elite Licensing Company S.A.
Dated: November 24, 2008