WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hachette Filipacchi Presse v. Perfect Privacy, LLC / Jing, Liu
Case No. D2017-2278
1. The Parties
The Complainant is Hachette Filipacchi Presse de Levallois Perret, France, represented by ipSO société selàrl, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Jing, Liu of Haerbin, Heiliongjiang, China represented by Leason Ellis, United States.
2. The Domain Name and Registrar
The disputed domain name <ellesilk.com> (the “Disputed Domain Name”) 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 November 16, 2017. On November 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 17, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on November 22, 2017. The Complainant filed an amended Complaint on November 23, 2017.
The Center verified that the Complaint together with the amended 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 November 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2017. On December 14, 2017, the Center received a request for an automatic four-day extension of the due date to submit a Response. The Center granted the extension and the due date for Response became December 23, 2017. The Response was filed with the Center on December 22, 2017.
On January 8, 2018, the Complainant submitted an unsolicited supplemental filing.
The Center appointed John Swinson as the sole panelist in this matter on January 11, 2018. 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.
On January 13, 2018, the Respondent submitted an unsolicited supplemental filing in response to the Complainant’s supplemental filing.
4. Factual Background
The Complainant is Hachette Filipacchi Presse, a French company which publishes the well-known fashion magazine Elle. Elle was first published in 1945 and is now distributed in over 90 countries. The Complainant also launched its Chinese edition of Elle in 1988. In 2015, the Chinese edition of Elle had a readership of over 4 million persons.
The Complainant owns a number of registered trade marks for ELLE, including international trade mark number 292472 (the “Trade Mark”) which was registered on December 28, 1964. This international trade mark designates numerous countries including China. The Complainant also owns various domain names incorporating the Trade Mark including <elle.com> which was registered on April 4, 1996.
The Respondent is Jing Liu, an individual of China and the registered owner of the Disputed Domain Name. According to the Response, the Respondent is the owner of a business trading as “ELLESILK”, a Chinese manufacturer and retailer of silk bedding and sleepwear. According to the Response, the Respondent has been operating her business since 1999. In 2009, the Respondent expanded her business by launching an online retail site located at the Disputed Domain Name.
The Disputed Domain Name was registered on March 18, 2009.
The Complainant sent a cease-and-desist letter addressed to Orange Focus Ltd, of which the Respondent is a director, dated October 10, 2016 in relation to the European Union trade mark application number 15802391 for ELLESILK in the name of Orange Focus Ltd. Among other things, the Complainant requested that Orange Focus Ltd withdraw its trade mark application and cease use of ELLESILK as a trade mark and in any domain name. On or about March 10, 2017, Orange Focus Ltd withdrew its trade mark application.
5. Parties’ Contentions
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name incorporates the Trade Mark. The Trade Mark is the dominant part of the Disputed Domain Name as it appears as the first element.
The additional term “silk” does not distinguish the Disputed Domain Name from the Trade Mark as it would be perceived by Internet users as descriptive of the fact that the goods offered for sale are silk goods.
The Disputed Domain Name presents a likelihood of confusion in the public mind visually, phonetically and intellectually with the Trade Mark. The likelihood of confusion is all the more characterised by the fact that the Trade Mark is internationally known and widely used for bed linen goods.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark, including in a domain name.
Further, the Respondent has not established a relationship with the Complainant for the use of the Trade Mark and does not intend to.
Registration and Use in Bad Faith
The Trade Mark is used and well-known worldwide, including in China.
The Respondent deliberately chose to incorporate the Trade Mark in the Disputed Domain Name to trade off the reputation of the Trade Mark. The Respondent’s use of the Trade Mark in the Disputed Domain Name can cause dilution of the Trade Mark.
The Disputed Domain Name was registered only for the purpose of attracting, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trade Mark as an endorsement of the website. Consumers will immediately identify the Trade Mark in the Disputed Domain Name and could be misled into believing there is some association with the Trade Mark.
The Trade Mark is totally arbitrary in relation to bed linen goods and it is not necessary to use the Trade Mark in order to refer to such goods.
Further, until recently, the Respondent used the same typeface used by the Complainant in respect of its Trade Mark for “ELLESILK” on the website associated with the Disputed Domain Name.
The Respondent was put on constructive notice of the Complainant’s contestation to the use of ELLESILK since as early as October 10, 2016 after trade mark applications for ELLESILK were filed in the European Union and the United States.
The Respondent makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name and Trade Mark are not identical or confusingly similar.
The term “Elle” is widely used in a variety of contexts including as the French pronoun for “she” and as a first name. A combination of the term “elle” with another term is not necessarily confusingly similar to the Trade Mark for consumers. To the contrary, Internet users are highly accustomed to distinguishing between such uses based on context and additional matters. This is recognised in the fact that the United States Trademark Office has permitted various marks which pair the term “elle” with a descriptive or generic term to coexist on the register. For example, the Trade Mark coexists with trade mark registrations for ELLEPOT for pots and ELLESOLE for shoe soles. “ellesilk”, as a term, is similarly distinguishable from the Trade Mark.
The Respondent does not dispute that the Complainant has carved out rights in the Trade Mark in connection with magazines and that the Complainant holds trade mark registrations for certain specific variants of the Trade Mark. However, the Complainant does not hold an absolute monopoly on all uses of the term “elle”.
Further, the Complainant has not cited a single instance of actual confusion caused by the Disputed Domain Name despite eight years of use. The Respondent is also unaware of any instances of actual confusion.
Rights or Legitimate Interests
The Complainant has failed to establish that the Respondent lacks a legitimate interest in the Disputed Domain Name.
Firstly, the Respondent began using “ELLESILK” and the Disputed Domain Name in connection with a bona fide offering of goods long before the Respondent was notified of any dispute. The Respondent has manufactured and sold silk linen and sleepwear in China under the “ELLESILK” brand since 1999. Prior to launching the website associated with the Disputed Domain Name, the Respondent’s business generated approximately USD 200,000 in annual sales. Since 2009, the Respondent’s business has generated over USD 2,210,000 in sales worldwide.
Secondly, as a result of the Respondent’s use and significant efforts to build her business both before and after registering the Disputed Domain Name, the Respondent has become commonly known by the name and mark “ELLESILK”. The Respondent maintains multiple social media accounts in connection with the “ELLESILK” brand, including a Pinterest account with over 14,500 followers.
The Complainant’s entire argument that the Respondent lacks a legitimate interest is that it did not authorise the Respondent’s use of the Trade Mark. Not only does the Complainant not have an absolute monopoly on the term “elle” but the fact that the term is commonly used by others without intent to refer to the Complainant makes it all the more possible for another party to establish a legitimate interest in a mark such as “ELLESILK”.
Registration and Use in Bad Faith
The Respondent neither registered, nor does she use, the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name in 2009 because she had been operating a bona fide silk business under the name “ELLESILK” for 10 years prior and had become known to consumers by that name.
None of the Complainant’s evidence is probative of bad faith. The Complainant’s evidence suggesting that the Respondent would have had any reason to suspect that the Complainant had entered the bedding space in China prior to 1999 or 2009 is noticeably thin. The Complainant’s purported evidence is either undated or refers to recent years. The Complainant’s trade mark registrations upon which the Complainant relies were not extended into China until 2003 and 2012, long after the Respondent began using “ELLESILK”.
The Complainant’s magazine may have been in circulation in China prior to the Respondent’s adoption of “ELLESILK”, but it is not clear that it had a licensing program for bedding or sleepwear in China at the time when the Respondent chose its mark, “ELLESILK”, or registered the Disputed Domain Name, or that the Respondent had any reason to know of it.
The Respondent was entirely unaware that the Complainant claimed rights in the Trade Mark with respect to bedding or sleepwear at the time when she registered the Disputed Domain Name.
The Respondent disagrees with the Complainant’s contention that the Trade Mark is “totally arbitrary in relation with bed linen goods” as bedding and home goods are very often marketed to women. The term “elle” is highly suggestive of femininity in this context, particularly in connection with the Respondent’s luxury silk bedding.
The Complainant’s only evidence of the Respondent’s purported bad faith is the Respondent’s previous logo, which appeared in a serif font arguably similar to the one used by the Complainant. The Respondent had no intent to trade off any goodwill in the Complainant’s marks or to disrupt the Complainant’s business. However, since receiving the Complainant’s cease-and-desist letter, the Respondent adopted a wholly distinct stylisation for her business’ logo. The Respondent has done this in a good faith attempt to address the Complainant’s concerns.
The Respondent has never sought to pass off her business as related to the Complainant, as evidenced from the overall look and feel of her website which is wholly distinct from the Complainant’s branded materials. The Respondent’s website also makes it clear that the products sold on it are the Respondent’s own and manufactured in China.
C. Supplemental Filings
The Parties make the following relevant contentions in their respective supplemental filings.
Complainant’s Supplemental Filing
The Respondent could not have been entirely unaware of the Complainant’s claimed rights in the Trade Mark with respect to sleepwear, lingerie and bedding due to the extent of media exposure and points of sale in China.
The Complainant provides evidence demonstrating that ELLE branded consumer products such as lingerie, sleepwear and bedding have been sold in China and Asia-wide since 2004.
The Complainant also provides further information relating to its licensing arrangements to apply the Trade Mark to various consumer goods. According to the Complainant’s supplemental filing, the Complainant has been licensing use of the Trade Mark in respect of nightwear, loungewear, sleepwear and bedding for over 10 years in China.
Respondent’s Supplemental Filing
The Complainant’s unsolicited supplemental filing should be disregarded by the Panel on the basis that the Complainant’s reasons for filing are not sufficiently exceptional to warrant or justify consideration. The Complainant’s supplemental filing contains purported evidence of its activities and licensing programs which it could have included in the Complaint. Further, the Complainant could have anticipated the Respondent’s arguments and addressed them in the Complaint, but did not bother to do so.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of these three elements.
A. Procedural Issues
Unsolicited Supplemental Filings
The Complainant submitted an unsolicited supplemental filing in these proceedings on January 8, 2018. The Respondent also submitted an unsolicited supplemental filing in response on January 13, 2018.
The Rules and the Supplemental Rules do not expressly provide for unsolicited additional filings. Generally, panels will only accept supplemental filings in “exceptional” circumstances where such a filing clearly shows its relevance to the case and why it was unable to provide the information contained therein in the original complaint or response (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Complainant’s supplemental filing provides further information in relation to the Complainant’s rights to the Trade Mark and offers rebuttal arguments in relation to the Response. These supplemental submissions contain relevant information which should and could have been included in the original Complaint. Nothing in the submissions would have been unavailable to the Complainant at the time it filed the Complaint.
In these circumstances, the Panel would ordinarily decline to accept the supplemental filings. However, the Panel considers that acceptance of the supplemental filings would not ultimately determine the outcome of this case. In light of the decision and for the purposes of giving full consideration to all the relevant information, the Panel has accepted and considered both supplemental filings.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name wholly incorporates the Trade Mark. The addition of the word “silk” and generic Top-Level Domain (“gTLD”) “.com” does not prevent a finding of confusing similarity, as the Trade Mark is recognisable within the Disputed Domain Name (see sections 1.7 and 1.8 of WIPO Overview 3.0).
The Panel finds that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name as the Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark or register the Disputed Domain Name. The Complainant licenses the Trade Mark for various bedding-related goods.
Prior to receiving the Complainant’s cease-and-desist letter in 2016, the Respondent had been operating a business under the name “ELLESILK” involving the manufacture and sale of silk bedding and sleepwear. The Respondent states that she started her business in 1999 and launched the website at the Disputed Domain Name in 2009.
As the Complainant points out, the Respondent has provided only declarative evidence and not substantive evidence as to the date on which she began operating her business. However, under the Policy, the Complainant must first make out a prima facie case before the Respondent is required to bear the burden of producing relevant evidence to demonstrate her rights or legitimate interests in the Disputed Domain Name (see section 2.1 of WIPO Overview 3.0). The Panel considers that the Complainant has failed to do so.
Although it provided somewhere in the vicinity of 600 pages of annexes between the Complaint and the Supplemental Complaint, the Complainant did not make any real attempt to address the potential rights or interests that the Respondent may have under paragraph 4(c) of the Policy. This is despite the fact that the Respondent is clearly operating a business from the Disputed Domain Name. The Respondent’s contentions are reasonably obvious arguments which the Complainant could have anticipated. By failing to address these, the Complainant has failed to make out a prima facie case under the second element.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
Since the Complainant has failed to establish the second element of the Policy, it is not strictly necessary for the Panel to reach a finding on the third element. However, the Panel will briefly address the key aspects of this element for completeness.
Since 1945, the Complainant has developed and undeniably enjoys substantial international reputation in the Trade Mark with respect to its fashion and lifestyle-related publications. The Disputed Domain Name was registered on March 18, 2009.
However, the Complainant has not provided sufficient evidence of the application of the Trade Mark to consumer goods such as bedding and sleepwear to allow the Panel to infer that the Respondent knew or should have known of the Trade Mark in respect of such goods at the time she registered the Disputed Domain Name in 2009. The Complainant also has not demonstrated on the evidence before the Panel that the Disputed Domain Name was chosen by the Respondent in 2009 in order to suggest some form of association with the Complainant.
The Panel accepts the Respondent’s submissions that the Complainant does not have a monopoly on the term “elle” which is a common French pronoun for “she” and is also a first name. In these circumstances, the Panel considers that the Respondent’s decision to register the Disputed Domain Name derives from the name “ELLESILK” under which she had been operating a retail business for about 10 years. Whether or not the Respondent’s use of “ELLESILK” as a business name in the first instance infringes the Complainant’s rights in the Trade Mark is not a matter for the Panel to decide under the Policy as this involves broader trade mark infringement issues better addressed by a court with discovery and cross-examination possibilities, and based on the materials provided to the Panel, the Panel cannot conclude that the Respondent began operating its business of selling silk bedding and sleepwear under the name “ELLESILK” in 1999 because of the Complainant.
Further, the Complainant has failed to provide sufficient evidence that demonstrates that the Respondent is using the Disputed Domain Name to trade off the Complainant’s reputation, to mislead Internet users or to disrupt the Complainant’s business. The Panel does not consider the former stylisation of the Respondent’s logo which bore some resemblance to the Complainant’s stylised ELLE logo by itself to be probative of the Respondent’s bad faith.
For the foregoing reasons, the Complaint is denied.
Date: January 25, 2018