WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hachette Filipacchi Presse v. Tracy Gray, Mode Elle Magazine
Case No. D2017-2044
1. The Parties
The Complainant is Hachette Filipacchi Presse of Levallois Perret, France, represented by ipSO société selàrl, France.
The Respondent is Tracy Gray, Mode Elle Magazine of Naples, Florida, United States of America (“United States” or “USA”).
2. The Domain Name and Registrar
The disputed domain name <modeellemagazine.net> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2017. On October 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 October 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on December 5, 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 is part of the Lagardère Group of Companies and is the owner of the fashion magazine, Elle. Elle was first published in 1945 and is now distributed in over 90 countries. Its total monthly distribution globally is over 6.5 million copies with approximately 21 million readers. It has a prominent presence in the USA, where the Respondent is located. The USA edition was first published in 1985 and over 1 million copies of Elle magazine were sold in the USA in December 2015, for a readership of approximately 5.5 million persons.
Elle’s reputation for covering women’s issues and lifestyle themes is such that it has developed into associated fields such as gastronomy, with publications such as Elle A Table and Elle Cuisine, as well as the luxury sector, with publications such as Elle Deluxe and Very Elle.
The Complainant is the owner of many Elle-related domain names including <elle.com>, <elle.fr>, <ellegirl.com> and <ellegirl.net>. The Complainant has also protected its trading style with a large number of trade mark registrations. These include;
- International trade mark registration no. 292,472, for ELLE (in stylised format), dated December 28, 1964, in 33 international classes and designating 35 countries, including the USA;
- European trade mark registration no. 3475365, for ELLE (in stylised format), dated October 30, 2003, in international classes 16, 35, 38, 41 and 42.
The Complainant’s trade mark is used for a wide range of services in the fashion field including clothes, shoes, watches and cosmetics.
The disputed domain name was registered on February 14, 2017. It points to a website, the home page of which is headed “Mode Elle Magazine” with words adjacent to it reading “Fashion & Beauty Industry”. The words “Mode Elle” appear above, and are more prominent than, the word “Magazine”. The typeface used for these words is either very similar to, or identical to, the stylized typeface which the Complainant has registered as a trade mark in multiple classes and jurisdictions and which it uses on its magazine. The webpages of the Respondent’s website provided by the Complainant include photographs of fashion models on what appear to be magazine covers. These include an image of a magazine cover for January 2016 which lists articles such as “Lives of Those in the Modelling and Acting Industry” and “Meet the Male Model of the Month”. The date of this cover pre-dates the date of registration of the disputed domain name by over a year.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its extensive portfolio of ELLE-related trade marks, details of two of these being set out above, and its similarly large portfolio of domain names as well as its longstanding international reputation in fashion and a number of related areas. It also points to earlier decisions under the Policy in which previous panels have recognized the well-known status of its trade marks.
The Complainant says that the disputed domain name reproduces the same essential components of its ELLE trade mark. It adds that the addition of the terms “mode” (being the French word for “fashion”) and “magazine” coupled with the generic Top-Level Domain (“gTLD”) “.net” are insufficient to distinguish the Respondent’s magazine from that of the Complainant and avoid any likelihood of confusion in the mind of the public. Moreover, it says, the distinctive element of the disputed domain name is “Elle” and the words “Mode” and “Magazine” are descriptive of its product and will reinforce a perceived connection by Internet users between the disputed domain name and the Complainant’s “Elle” brand.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that the Complainant has not licensed or otherwise permitted the Respondent to use any of its ELLE trade marks nor any domain name incorporating any of its marks. Moreover, the Respondent has not established, or attempted to establish, a relationship with the Complainant for the use of its ELLE trade marks.
The Complainant says, lastly, that the disputed domain name was registered and used in bad faith. It says that the Complainant’s trade mark is very well-known worldwide, in particular in the USA, and that the Respondent could not have been unaware of the strong reputation of the Complainant’s trade mark when she registered the disputed domain name. The Complainant says that the well-known status of the Complainant’s ELLE magazine would inevitably have been a factor for the Respondent when she chose to register the disputed domain name. Specifically, the Complainant submits that the disputed domain name was registered for the purpose of intentionally attracting, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion among Internet users that to the effect that the Complainant had in some way endorsed the Respondent’s website.
The Complainant says that the Respondent did not have to use the Complainant’s trade mark in order to establish a fashion-related website and that the close similarity in typefaces between that used by the Complainant since it was established in 1945 and that used by the Respondent cannot have been purely coincidental. The Complainant says the typeface has been adopted by the Respondent in order to increase the likelihood of confusion for Internet users who are likely to perceive the Respondent’s magazine as emanating from, or in some way connected with, the Complainant. The Complainant says this is particularly of concern because the Respondent is using its magazine to attract models to use its services and that those models are likely to consider that they are dealing with the authentic ELLE magazine or a derivative of it.
For these reasons, the Complainant says that the fame of its ELLE trade mark is such that the overwhelming inference to be drawn is that the Respondent chose to incorporate its trade mark into the disputed domain name to trade off the Complainant’s reputation in its ELLE trade mark and attract Internet users to its website.
The Complainant points out, lastly, that the Respondent’s company would now appear to be inactive due to an administrative dissolution.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of its many trade marks for ELLE, including the two trade marks, full details of which are provided above. It has accordingly established that it has rights in the trade mark ELLE.
As the Complainant says, it is well established that the gTLD suffix (“.net” in the case of the disputed domain name) is not taken into account for the purposes of determining whether a domain name is identical or similar to a complainant’s trade mark.
In the disputed domain name, the Complainant’s trade mark is preceded by the word “mode” (that is, “fashion” in French) and followed by the word “magazine”. Both of these words are closely associated with the area of activity in which the Complainant has a substantial reputation, namely publications in the fashion sector. As the Complainant has said, the addition to its trade marks of descriptive words so closely associated with its principal product offering do not serve to render the disputed domain name dissimilar to the Complainant’s trade mark. They are more apt to reinforce an association on the part of Internet users between the disputed domain name and the Complainant’s business.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, three circumstances which, if found by a panel to be present, would establish that a respondent has a right or legitimate interest in a domain name. These are, in summary, if:
(i) before any notice to it of the dispute, a respondent had used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Grounds 4(c)(ii) and 4(c)(iii) are inapplicable. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. Furthermore, such use as the Respondent has made of the disputed domain name is plainly commercial in character. However, whether the use made by the Respondent of the disputed domain name has been in connection with a bona fide offering of goods and services requires more detailed consideration.
It is evident from the screen prints provided by the Complainant of the website to which the disputed domain name points that the that the Respondent has been using the disputed domain name for the purpose of publication of a fashion magazine for some months and that such use preceded any notice the Respondent has had of the dispute concerning the disputed domain name.
In considering whether such use is bona fide, the Panel has regard to a number of factors. First, the Complainant has established that it has a widespread and substantial reputation in its ELLE trade mark, including in the USA and the Respondent is unlikely to have chosen the word ELLE as a component of its name for its magazine without any awareness of the Complainant. In this respect, the words “mode” (French for “fashion”) and “elle” (French for “she”) are perhaps not the most natural choices of words for a magazine which the Respondent, based in the USA appears to be directed at an English-speaking audience and reinforce the likelihood of an awareness by the Respondent of the Complainant’s magazines.
Second, the typeface used by the Respondent in the stylized form of its “Mode Elle Magazine”, used prominently throughout her website, is either identical to or, at least, substantially the same as, the distinctive typeface which the Complainant has used for its “Elle” magazine for many decades. The similarities are so close that they cannot be coincidental. This substantiates the Complainant’s assertion that the Respondent has deliberately chosen a name for her magazine, corresponding to the disputed domain name, together with a stylization for that name, each of which is intentionally intended to deceive Internet users into believing that there is a connection between the Respondent’s magazine and the many ELLE-related publications distributed by the Complainant.
Lastly, the Respondent has chosen not to respond to the Complaint and accordingly there is no evidence before the Panel which seeks to rebut the Complainant’s assertion that the name and stylization chosen by the Respondent for her magazine are deliberately intended to confuse Internet users into believing that there is a connection between the Respondent’s magazine and the Complainant. The Panel adds that the presence of a January 2016 magazine cover for Mode Elle Magazine on the Respondent’s website (this cover pre-dating by over a year the date of registration of the disputed domain name) is very odd, but the Panel makes no specific finding about it.
In Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052, the panel also had to consider a position in which both the complainant and the respondent operated similarly named businesses, albeit the respondent in those proceedings sought actively to justify its use of the domain name in issue by filing a response to the complaint. The panel in that case held that “as advertised on Complainant’s and Respondent’s websites, both businesses offer their mortgage lending services to residents in Southern California. It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy”. Similarly, in The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474, where the complainant and respondent also operated similarly named businesses (and in which the respondent likewise sought to justify its use of the domain name in issue by filing a response in the course of the proceedings), the panel found that the respondent had no legitimate interest in the domain names in issue, in part because the respondent had known of the complainant and its trading style when it registered the disputed domain name.
It is possible to conceive of circumstances in which a respondent’s use of a domain name which incorporated a complainant’s trade mark and which pointed to a website offering goods and/or services similar to those of the complainant, might nonetheless be considered a bona fide offering for the purpose of paragraph 4(c)(i) of the Policy. However, the Complainant in these proceedings has raised a credible assertion that the Respondent’s “Mode Elle Magazine” offering (both the name itself and its stylisation) is deliberately intended to mislead Internet users into thinking that there is a connection between the Respondent’s magazine and that of the Complainant and the Respondent has made no attempt to rebut the Complainant’s assertions or otherwise explain her position. In those circumstances, the Panel finds that the Respondent’s offering of goods and services is not bona fide and that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has established that its ELLE magazines have a substantial international reputation in the field of fashion and lifestyle-related publications, including in the United States, to the extent that it is appropriate to infer that the Respondent would have been aware of the Complainant’s ELLE trade mark as at the time she registered the disputed domain name and that the disputed domain name was chosen in order to suggest some form of association with the Complainant.
Similarly, the Panel concludes that the stylized form of Mode Elle Magazine which the Respondent has used was so close to that used by the Complainant for its Elle magazine that that the appropriate inference to draw is that the stylization was deliberately chosen in order to mislead Internet users into believing that there was some form of association between the Respondent’s magazine and the Complainant’s ELLE publications.
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, will be considered to support a finding of bad faith registration and use of a domain name. The circumstance described at sub-paragraph 4(b)(iv) of the Policy is (in summary) if a respondent by using a domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or a product on it.
For the reasons set out above, the Respondent’s conduct fits within the circumstances described by this sub-paragraph. The Panel accordingly finds that the disputed domain name was registered and has been used by the Respondent in bad faith.
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 <modeellemagazine.net> be transferred to the Complainant.
Date: December 18, 2017