WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elite Licensing Company SA v. Amy Lai, Pacific International Corporation
Case No. D2017-1029
1. The Parties
The Complainant is Elite Licensing Company SA of Paradiso, Switzerland, represented by T&G Law Firm LLC, Viet Nam.
The Respondent is Amy Lai, Pacific International Corporation, of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <elitemodelvn.com> (the "Disputed Domain Name") is registered with FastDomain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2017. On May 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 26, 2017, 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" 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 13, 2017. 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 Complainant belongs to Elite World SA ("Elite World"), which was founded in Paris in 1972, and became famous for discovering and launching the career of the most famous models in the world. The Complainant was established in 1998 as a wholly owned subsidiary of Elite World. Over the years, the Complainant became a leading model management company, representing top models in the world and extending its presence in the consumer market through licensing agreements with beauty product companies. Elite World and the Complainant created Elite Model Look, which is a well-known international modeling contest. The international modeling contest attracts more than 350,000 participants every year from 800 cities in 70 countries across five continents. As a result, the Complainant is widely known internationally and has acquired substantial goodwill and a valuable reputation.
The Complainant is the registered owner of the ELITE trademark in various classes in several jurisdictions, including Viet Nam. Specifically, the Complainant is the owner of numerous trademarks in Viet Nam that incorporate the ELITE trademark. These include International Trademark Registration No. 949195, registered on September 14, 2007, in classes 3, 5, 8-12, 14, 16, 18, 20, 21, 24-26, 28, 32, 35, 38, 41 and 43-44; International Trademark Registration No. 662469, registered on July 23, 1996 in classes 9, 14, 18, 30, 32, and 42; International Trademark Registration No. 663732, registered on November 7, 1996 in classes 12, 38, and 41; and International Trademark Registration No. 693264, registered on December 17, 1997 in classes 3, 16, and 36 (collectively, "the ELITE Mark"). The Complainant operates its primary website at "www.elitemodelworld.com" and promotes its business in numerous countries via country-specific websites.
The Respondent registered the Disputed Domain Name on April 12, 2001, decades after the Complainant began using its trademark registrations for the ELITE Mark. The Disputed Domain Name resolves to a website called "Elite Vietnam" that claims to be Vietnam's leading model management company. The website includes information about becoming a model and contains photos of women and men models that are allegedly represented by "Elite Vietnam", using a similar font and stylization as the Complainant.
5. Parties' Contentions
In summary, the following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the ELITE Mark based on both long and continuous use as well as its numerous trademark registrations in jurisdictions around the world for the ELITE Mark. The Disputed Domain Name <elitemodelvn.com> consists of the ELITE Mark followed by the descriptive word "model", followed by "vn", the country code designation for Viet Nam, and followed by the generic Top-Level Domain ("gTLD") ".com".
Numerous UDRP decisions have reiterated that the addition of a descriptive word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. This is especially true where, as in the present case, the descriptive word "model" is associated with the Complainant and its business. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Further, the addition of the geographical designation "vn" does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainant's ELITE Mark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term "korea" in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant's trademark).
Finally, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its ELITE Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.
Moreover, the Respondent's unauthorized registration and use of the Disputed Domain Name to create a website bearing the ELITE Mark does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy.
Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's ELITE Mark. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to attract customers to its website by using a domain name that is confusingly similar to the Complainant's ELITE Mark. The Respondent's creation of a website that could be considered by Internet users to be an authentic website of the Complainant purportedly to promote legitimate modeling services bearing the ELITE Mark demonstrates the Respondent's bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use created the false impression that the Respondent's website was affiliated with or endorsed by the Complainant when it was not.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant's Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used the ELITE Mark.
The continuous and public use of the ELITE Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the ELITE Mark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <elitemodelvn.com> be transferred to the Complainant.
Lynda M. Braun
Date: July 16, 2017