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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hachette Filipacchi Presse v. Shi Cheng
Case No. D2005-1240
1. The Parties
The Complainant is Hachette Filipacchi Presse, Levallois-Perret, France, represented
by Markplus International, France.
The Respondent is Shi Cheng, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <elleilove.com> is registered with HiChina Web
Solutions (Hong Kong) Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
Ў°CenterЎ±) on December 1, 2005. On December 2, 2005, the Center transmitted by
email to HiChina Web Solutions (Hong Kong) Limited a request for registrar verification
in connection with the domain name at issue.
On December 9, 2005, HiChina Web Solutions (Hong Kong) Limited transmitted
by email to the Center its verification response confirming that the Respondent
is listed as the registrant and providing the contact details for the administrative,
billing, and technical contact and that the registration agreement is in Chinese.
On the same day, the Center notified the Complainant of this, and the Center
requested the Complainant to provide satisfactory evidence of an agreement between
the Complainant and the Respondent to the effect that the proceedings should
be in English, failing which the Complainant had to submit a Chinese translation
of the Complaint.
In the meantime, however, on December 7, 2005, the Respondent had responded,
in English, to the CenterЎЇs notification of the Complaint by informing the Center
that their web site showcased their products and that they were authorized to
sell the products in China.
On December 12, 2005, the Complainant wrote to the Center, copying the Respondent,
requesting that the language of the proceedings be in the English language relying
on the following reasons:
1) the disputed domain name contained the English words Ў®I LOVEЎЇ;
2) the Respondent responded to the CenterЎЇs acknowledgement of receipt of the
Complaint in English; and
3) the difficulty involved obtaining a Chinese translation of the Complaint.
On December 14, 2005, given the circumstances of the case, the Center decided
to allow the commencement of the proceedings without requiring that the Complaint
be filed in Chinese. The Center notified the parties that the Response could
be filed either in English or Chinese, and it would appoint a Panel familiar
with both languages. These directions were without prejudice to the Panel to
decide upon the correct language of the proceedings and to issue directions
in connection therewith. The Center also sent the Respondent, in Chinese, the
Complaint Transmittal Cover Sheet, setting out the procedures to be complied
with in these Proceedings. The Respondent chose not to file a Response.
The Center verified that the Complaint satisfied the formal requirements of
the Uniform Domain Name Dispute Resolution Policy (the Ў°PolicyЎ±), the Rules
for Uniform Domain Name Dispute Resolution Policy (the Ў°RulesЎ±), and the WIPO
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Ў°Supplemental
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally
notified the Respondent of the Complaint, and the proceedings commenced on December
15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response
was January 4, 2006. The Respondent did not submit any response. Accordingly,
the Center notified the RespondentЎЇs default on January 11, 2006.
The Center appointed Richard Tan as the sole panelist in this matter on January
25, 2006. 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.
Having considered the circumstances of the case, including the fact that (1)
the Complaint was first filed in English, (2) the Respondent previously communicated
with the Center in English, and (3) the Respondent has not filed a Response,
this Panel exercised its discretion pursuant to Paragraph 11(a) of the Rules
to decide that the language of this administrative proceeding would be English.
The Panel issued Administrative Order No. 1 on February 6, 2006, to inform
the parties of this, and also directed therein that the Respondent be at liberty
to file, in English, its Response to the Complaint, if it so desired, within
seven days of the date of the Order, ie, by February 13, 2006. On February 15,
2006, the Center informed the Panel that the Respondent had not filed a response
to the Administrative Order.
4. Factual Background
The Complainant is a French publishing company, publishing several magazines
including the ladiesЎЇ fashion magazine, Ў°ELLEЎ±.
The Complainant has also secured numerous trade mark registrations for the
mark Ў°ELLEЎ± in various jurisdictions around the world, both as a word mark,
and as a stylized version, in various classes, such as Classes 3, 16, 38, 41
and 42. The earliest of these registrations dates back to January 21, 1966.
In the PeopleЎЇs Republic of China, where the Respondent is located, the Complainant
has subsisting registrations for the mark Ў°ELLEЎ± in Classes 38 and 41, which
have been in force since 1996.
The Respondent registered the disputed domain name <elleilove.com> with
HiChina Web Solutions (Hong Kong) Limited on August 24, 2005. The disputed domain
name resolves to an advertising portal prominently displaying the words Ў°ELLEiloveЎ±
and the same stylized version of Ў°ELLEЎ± as used by the Complainant in its magazines.
At the top of the home page is a reference to Ў°·Ё№ъ°®БЛ ±ЬФРїЪємFRANCE ELLE BRAND ADMINISTER
GROUP (HK) LTDЎ±. The Chinese text means Ў°French Ў®AI LEЎЇ [a Chinese phonetic
equivalent of Ў°ELLEЎ±] contraceptive lipstickЎ±.
5. PartiesЎЇ Contentions
The Complainant contends as follows:
(a) that the disputed domain name <elleilove.com> is confusingly similar
to the ComplainantЎЇs Ў°ELLEЎ± mark in that it incorporates ComplainantЎЇs mark
in its entirety combined with the words Ў°iЎ± and Ў°loveЎ±, and that this is insufficient
to distinguish the disputed domain name from ComplainantЎЇs mark, because the
predominant part of the disputed domain name is Ў°ELLEЎ±.
(b) the Respondent has no rights or legitimate interest in respect of the disputed
(c) the RespondentЎЇs registration and use of the disputed domain name is in
bad faith as by registering the disputed domain name with knowledge of the ComplainantЎЇs
rights in its ELLE mark, it sought to use the disputed domain name to intentionally
attract, for commercial gain, Internet users by creating a likelihood of confusion
with the ComplainantЎЇs ELLE mark as to the source, sponsorship, affiliation
and/or endorsement of the RespondentЎЇs website which promotes merchandise, albeit
not related to the Complainant.
The Respondent has not filed any Response.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements
under paragraph 4(a) of the Policy in order to be entitled to a transfer of
the disputed domain name:
(i) that the RespondentЎЇs domain name is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) that the Respondent domain name has been registered and is being used
in bad faithЎ±.
The Respondent is required under the Rules to submit a Response to the Complaint
within twenty days of the date of commencement of the administrative proceedings.
In the event of a failure to submit a Response, paragraph 5(e) of the Rules
provides that absent any exceptional circumstances, the Panel is to decide the
dispute Ў°based upon the complaint.Ў± Paragraph 14(b) of the Rules further provides
that if a party, in the absence of exceptional circumstances, fails to comply
with any provision of the Rules, the Panel is entitled to Ў°draw such inferencesЎ±
from the RespondentЎЇs failure to comply with the Rules Ў°as it considers appropriate.Ў±
As the Respondent has not submitted a Response, and there having been no exceptional
circumstances brought to the attention of the Panel, in accordance with paragraph
5(e) of the Rules, this Panel is entitled to decide the dispute based on the
Complaint and to accept as true the factual averments of the Complaint for the
purposes of these proceedings. Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009.
The RespondentЎЇs default, however, does not lead to an automatic ruling in
favor of the Complainant. The burden remains on the Complainant to establish,
on a balance of probabilities, that it is entitled to a transfer of the domain
name. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO
Case No. D1999-0001.
A. Identical or Confusingly Similar Domain Name
The Complainant is required under paragraph 4(a)(i) of the Policy to prove
that the domain name is identical or confusingly similar to a trademark in which
the Complainant has rights.
The Complainant has furnished prima facie evidence that it is the owner of
a number of trade marks in respect of the mark Ў°ELLEЎ±, and accordingly, has
rights in the same. This mark has also been registered in Classes 38 and 41
in the PeopleЎЇs Republic of China, where the Respondent is located, since 1996.
The Complainant has also sought to argue that the ComplainantЎЇs mark is well
On the basis of its trade mark registrations, this Panel accepts that the Complainant
has rights in the mark Ў°ELLEЎ±.
The disputed domain name incorporates the ComplainantЎЇs mark in its entirety,
and combines it with the generic words Ў®iЎЇ and Ў®loveЎЇ. It is well-established
under the Policy that a domain name composed of a trademark coupled with a generic
term can still be regarded as confusingly similar to the trademark, see for
example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a
SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO
Case No. D2002-0367, where the panel held that the addition of the generic
term, Ў®automotiveЎЇ did not distinguish a respondentЎЇs domain name <experianautomotive.com>
from the complainantЎЇs mark, as the domain name contained the ComplainantЎЇs
EXPERIAN mark in its entirety.
This Panel would similarly find that the addition of the words Ў°iloveЎ± to the
ComplainantЎЇs Ў°ELLEЎ± mark is not sufficient to distinguish it from the ComplainantЎЇs
mark, and that the subject domain name is confusingly similar therewith.
B. Rights or Legitimate Interests
The Complainant is also required under paragraph 4(a)(ii) of the Policy to
prove that the Respondent has no rights or legitimate interests in the disputed
domain name. The onus is initially on the Complainant to establish a prima facie
case, and once this has been done, the onus shifts to the Respondent to prove
the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and
John Zuccarini, WIPO Case No. D2001-0700.
It has also been recognized by many panels that it is difficult for the Complainant
to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy, since
it raises matters within the knowledge of the Respondent. Accordingly, many
panels have held that it is sufficient that the complainant show a prima facie
evidence in order to shift the burden of proof on the respondent (see, for example,
Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO
Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO
Case No. D2000-1467).
In the present case, the Complainant asserts that the Respondent has no rights
or legitimate interests in respect of the disputed domain name, and that the
Respondent refers directly to the ComplainantЎЇs Ў°ELLEЎ± magazine in its website,
and this use was without the consent of the Complainant as the mark owner. The
Complainant also asserts that the Respondent does not own any trade mark rights
in the disputed domain name and has no links with the Complainant.
Even in the absence of a Response, this Panel remains obliged to consider whether
any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the
Policy are present to support a finding of the Respondent having rights or legitimate
interests in respect of the disputed domain name, namely:
(i) before any notice to the Respondent of the dispute, the RespondentЎЇs use
of, or demonstrable preparations to use, the domain name or a name corresponding
to the domain name in connection with a bona fide offering of goods or services;
(ii) the Respondent (as an individual, business, or other organization) has
been commonly known by the domain name, even if it has acquired no trademark
or service mark rights; 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.
If any of the above circumstances is established, the Respondent may be said
to have rights to or legitimate interests in the domain name for the purposes
of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems,
WIPO Case No. D2001-0827), in which event, the Complaint must be denied.
To establish that the Respondent has rights or legitimate interests in the
disputed domain name under Paragraph 4(c)(i) the critical requirement is the
RespondentЎЇs use of the domain name in connection with a bona fide offering
of goods or services.
It appears to the Panel that the RespondentЎЇs website provides feminine interest
news items and health products. However, there are very extensive references
to the mark Ў°ELLEЎ± and also in the same typeface as that used by the Complainant.
The site is also peppered with references to Ў°International BrandЎ± and Ў°France
Since the Respondent has not filed a Response, the Panel would also infer that
the Respondent has no trademarks or service marks identical to Ў°ELLEЎ± (See NatЎЇl
Academy of Recording Arts & Sciences Inc. v. Lsites, National Arbitration
Forum, Case No. FA00103059). There is also no evidence to suggest that the Respondent
has been commonly known by the domain name.
The overall impression created is that the Respondent is aware of the ComplainantЎЇs
mark, but yet has sought to use this mark in connection with the offering of
its own products for commercial sale at its website under the disputed domain
The Panel accordingly concludes that the Respondent has not used the disputed
domain name in connection with a bona fide offering of goods or services, and
that the Respondent has used the same to misleadingly divert consumers within
the meaning of paragraph 4(c)(iii) of the Policy.
This Panel accordingly finds that the Respondent has no rights or legitimate
interests in the disputed domain name within the meaning of Paragraph 4(a)(ii)
of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition
to the matters set out above, further demonstrate that the disputed domain name
has been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances
which Ў°if found by the Panel to be present, shall be evidence of the registration
and use of a domain name in bad faithЎ±, namely:
(i) circumstances indicating that the Respondent has registered or has acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainantЎЇs mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or locationЎ±
The Complainant asserts that the disputed domain name is registered and used
by the Respondent in order to attract Internet users to the RespondentЎЇs site,
by exploiting the ComplainantЎЇs mark and the goodwill attached to them, and
that this fulfills the requirement under Paragraph 4(a)(iii) of the Policy.
In the absence of a response, having regard to the RespondentЎЇs website and
all the circumstances, and in particular, the extensive references to the ComplainantЎЇs
Ў°ELLEЎ± mark on the RespondentЎЇs website, which are also in the same stylized
form as that used by the Complainant, the Panel is prepared to infer that the
Respondent had registered and used the disputed domain name in bad faith with
knowledge of the ComplainantЎЇs rights in its Ў°ELLEЎ± mark, and to intentionally
attract, for commercial gain, Internet users by creating a likelihood of confusion
with the ComplainantЎЇs ELLE mark as to the source, sponsorship, affiliation
and/or endorsement of the RespondentЎЇs website promoting merchandise unrelated
to the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel accordingly finds paragraph 4(a)(iii) of the Policy has been established.
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 name <elleilove.com
> be transferred to the Complainant.
Date: February 24, 2006