WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hachette Filipacchi Presse v. Andrey Kovyryn
Case No. D2018-1665
1. The Parties
Complainant is Hachette Filipacchi Presse of Levallois Perret, France, represented by ipSO société selàrl, France.
Respondent is Andrey Kovyryn of Moscow, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <elle-decor.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 24, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2018, the Registrar 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" 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 21, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 27, 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.
4. Factual Background
Complainant is a company organized under the laws of France that is the publisher of various magazines, inter alia, the magazines "ELLE" as well as "ELLE DECORATION", known in certain countries as "ELLE DECOR" (e.g. in the United States of America, India, China or Italy) or known as "ELLE DEKOR" (e.g., in the Russian Federation).
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designations ELLE and ELLE DECORATION including, inter alia:
- Word-/device mark ELLE, European Union Intellectual Property Office (EUIPO), registration number: 003475365, registration date: October 11, 2005, status: active;
- Word-/device mark ELLE, Russian Patent and Trademark Office (RuPTO), registration number: 150410, registration date: February 28, 1997, status: active;
- Word mark ELLE DECORATION, Word Intellectual Property Office (WIPO), registration number: 550193, registration date: November 3, 1989, with protection, inter alia, in the territory of the Russian Federation, status: active.
Respondent, a resident of the Russian Federation, registered the disputed domain name on January 19, 2018. As of the time of the rendering of this decision, the disputed domain name does not redirect to any content on the Internet. Still, Complainant has evidenced that at some point before the filing of this Complaint, the disputed domain name redirected to a website at "www.elle-decor.biz" which apparently exactly copied Complainant's official website at "www.elledecor.com", including Complainant's editorial content, website interface, legal terms and trademarks plus a reference via a hyperlink to Complainant's official website "www.elledecor.com".
On March 7, 2018, Complainant sent a cease and desist letter via email to the contact information listed for Respondent in the WhoIs for the disputed domain name which remained unanswered.
Complainant requests that the disputed domain name be cancelled.
5. Parties' Contentions
Complainant contends that its ELLE trademark was first adopted in 1945 and has been rolled out over the world ever since to now amount to more than 1,600 trademark registrations, including in the Russian Federation where Respondent is domiciled.
Complainant submits that the disputed domain name is identical or almost identical to Complainant's ELLE trademark, as it is essentially composed of the latter to which the descriptive word "decor" has been added. Moreover, Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not granted any authorization to Respondent to use the ELLE or ELLE DECORATION trademarks and (2) Respondent has entirely copied Complainant's website available at "www.elledecor.com" while redirecting consumers to Respondent's website at
"www.elle-decor.biz", thereby using Complainant's editorial content, website interface, legal terms and trademarks. Finally, Complainant submits that the disputed domain name was registered and is being used in bad faith since Respondent, by copying the editorial content, website interface, legal terms and trademarks of Complainant's official website, has shown that it knows Complainant and is seeking a free ride on the investments made by Complainant in its website and trademarks, thereby obtaining in undue advantage in the market, by profiting from Complainant's rights, investments and reputation.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <elle-decor.biz> is confusingly similar to the ELLE and ELLE DECORATION trademarks in which Complainant has rights.
The disputed domain name incorporates Complainant's ELLE and ELLE DECORATION trademarks in its entirety or at least significant parts thereof. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can already be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8), that the addition of a generic wording to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term "Decor" to e.g. Complainant's ELLE trademark does not dispel the confusing similarity arising from the incorporation of said trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's ELLE and ELLE DECORATION trademarks, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms "elle" and "elle decoration". To the contrary, Respondent apparently copied the editorial content, website interface, legal terms and trademarks of Complainant's official website at "www.elledecor.com" for purposes of setting up its own website under the disputed domain name, which is highly likely to confuse Internet users into believing that Respondent's website is an official website run by Complainant itself.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Redirecting the disputed domain name, which is confusingly similar to Complainant's ELLE and ELLE DECORATION trademarks, to a website that copied the editorial content, website interface, legal terms and trademarks of Complainant's official website at "www.elledecor.com", is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant's ELLE and ELLE DECORATION trademarks as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In this context, the Panel has also noted that Respondent apparently used fault or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of the Complaint dated July 31, 2018 could not be delivered. This fact at least throws a light on Respondent's behavior which supports the Panel's bad faith finding.
Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy set forth by paragraph 4(a)(iii).
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 <elle-decor.biz> be cancelled.
Stephanie G. Hartung
Date: September 7, 2018