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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Elite Model Management Corporation v. Wesley Perkins

Case No. D2006-0297

 

1. The Parties

Complainant is Elite Model Management Corporation, New York, New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.

Respondent is Wesley Perkins, Birmingham, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrars

The disputed domain name <elitemodels.com> is registered with Dotster, Inc. The disputed domain name <elitemodels.net> is registered with CoolHandle Hosting, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2006. On March 9, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. On March 9, 2006, Dotster, Inc. 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. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2006. The Response was filed with the Center on March 30, 2006.

The Center appointed Ross Carson as the sole panelist in this matter on April 7, 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.

The original Complaint related to the single domain name <elitemodels.com>. On April 3, 2006, Complainant made a request to the Panel to accept an Amended Complaint adding a second domain name <elitemodels.net> also owned by Respondent. Respondent submitted arguments opposing the addition of the domain name <elitemodels.net> to this administrative proceeding. After receiving the proposed Amended Complaint and considering the submissions of the parties, the Panel decided to accept the Amended Complaint adding the second domain name <elitemodels.net> to the proceeding and advised the parties on April 19, 2006. Complainant filed the Amended Complaint on April 19, 2006. Respondent filed the Amended Response on April 24, 2006.

On May 4, 2006, Complainant forwarded an e-mail to the Center informing that although Complainant received a copy of Respondent’s Amended Response, Complainant never received copies of Annexes 1 to 26 of the Amended Response. Complainant submitted that reference is made in the Amended Response to Complainant having made offers to purchase the domain name <elitemodels.com> from Respondent. Complainant states in the email to the Center of May 4, 2006, that shortly after the original Complaint was filed, Complainant received a call from an attorney purporting to represent Respondent in this matter, who proceeded to make a settlement offer on behalf of Respondent. Complainant states that subsequent settlement discussions ensued between the parties but the parties were unsuccessful in settling the matter. Respondent attached as Annex 24 to the Amended Response an email from an attorney representing Respondent on the Subject “Re: elitemodels.com settlement” which contained an offer of settlement from Complainant to Respondent. By an email dated May 5, 2006, Respondent submits that Complainant’s offer to acquire the domain name <elitemodels.com> in an email dated March 23, 2006 is relevant evidence of an attempt to reverse hijack the domain name by Complainant.

In the case of The Vanguard Group,Inc. v. Emilio Sa, WIPO Case No. D2001-1453, the panel thoroughly reviewed the rules of evidence relating to admissibility of evidence of settlement negotiations whether or not either party used the words “without prejudice.” The panel found that settlement negotiations should be excluded where the intent of the communications is to make a bona fide attempt to compromise a disputed claim, but not excluded when made to advance a nefarious scheme or support an “unambiguous impropriety.” See also McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited, Maxol Lubricants Limited, Maxo Oil Limited, Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004- 0078. The Panel concludes on the balance of probabilities that the settlement negotiations were initiated by a lawyer representing Respondent. Complainant’s offer of settlement was for the purpose of settling the dispute relating to the domain name <elitemodels.com> and not for any nefarious scheme. Based on the facts in this case the Panel finds that the evidence relating to settlement is inadmissible.

Complainant also submitted that allegations made by Respondent in the Amended Response that Complainant previously owned the domain names <elitemodels.com> and <elitemodels.net> are incorrect. As seen in Annexes 25 and 26 to the Amended Response, the domain names which expired were previously owned by Elite Model Management S.A., a Swiss company which at one time was a parent company of Complainant. Complainant and the Swiss Company are now entirely separate and independent. The Panel agrees with Complainant’s position that the decision of the former parent company not to re-register the two domain names is not relevant to Complainant’s rights in this proceeding.

4. Factual Background

Complainant is the registered owner of both service mark registrations and pending service mark applications in the United States of America for or including ELITE registered or applied for in relation to model agency services.

Complainant holds a United States registration for the word mark ELITE MODEL MANAGEMENT (Reg. 1155834) in international class 35 for model agency services, registered on May 26, 1981, and claiming a first use date of March 12, 1979. Complainant also holds United States Registration No. 1273825 for the word mark ELITE in International Class 35 for model agency services, with a first use date of March 12, 1979; this trademark was registered on April 10, 1984. Complainant also has pending United States applications for the marks ELITE MODEL LOOK and ELITE MODEL LOOK (stylized) in Class 41 for educational services in the nature of a modeling school; modeling for artists; entertainment in the nature of modeling contests. Copies of printouts from the United States Patent and Trademark Office dated March 8, 2006, for the above noted marks and applications are attached as Annex 8 to the Amended Complaint.

Complainant is also the owner of the common law trademark ELITE MODEL. The words “Elite Model” form the root phrase for both the ELITE MODEL MANAGEMENT and ELITE MODEL LOOK marks, and those marks are often shortened to the more manageable ELITE MODEL, which is precisely why Complainant long ago registered the domain name <elitemodel.com>, which it continues to use as its primary domain name.

Complainant has maintained a presence on the Internet since at least 1996, when it purchased the domain name <elitemodel.com>. A copy of the domain registration information for <elitemodel.com> is attached as Annex 10 to the Amended Complaint. Complainant’s website located at “www.elitemodel.com” serves as a clearinghouse for anyone seeking information about Complainant’s current and former models, its history, the services it offers and recent coverage in the press, along with information on how to become an Elite model. Complainant’s trademarks for or including ELITE are used prominently and frequently throughout that website. (Annexes 5, 6 and 7 to the Amended Complaint).

Complainant is one of the leading modeling agencies in the United States, and has held that position for more than 25 years. Ever since it opened its New York office in 1977, and then quickly expanded to other cities such as Los Angeles, Chicago, Atlanta and Miami, Complainant has been one of the most recognized industry names in the United States. Printouts from Complainant’s website showing Complainant’s history, its models and its current range of services are attached as Annex 5 to the Amended Complaint. Some of the most recognizable names and faces of models began their careers with Complainant, including Cindy Crawford, Linda Evangelista, Stephanie Seymour, Heidi Klum, Gisele Bundchen, Naomi Campbell, Claudia Schiffer and Tyra Banks. See Annex 5 to the Amended Complaint. Complainant currently represents over 500 models, including Alessandra Ambrosio, Kemp Muhl, Yfke Sturm, Emina Cunmulaj and Melissa Haro. Complainant’s models are recruited from countries around the world, work in all areas of the international fashion industry and appear in all forms of advertising published in every medium available today, including television, magazines and the Internet. (Annex 5 to the Amended Complaint).

Complainant uses its trademark for or including ELITE to promote its business, its fashion models and its services. Complainant also promotes its trademarks for or including ELITE through other types of activities, such as fashion industry events, presentations during “Fashionweek” in New York City promoting new ELITE models and pictorials in magazines depicting “New Faces of Elite.” Complainant also widely disseminates model cards which include photographs and information about its models through the fashion industry to promote opportunities. (Annexes 7 and 9 to the Amended Complaint).

Complaint has spent millions of dollars in promoting its services and models in association with the trademarks for or including ELITE since commencing operations in New York in 1997.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Policy, paragraph 4(a)(i)

As stated in Section 4 above, Complainant is the owner of two active United States trademark registrations for ELITE and ELITE MODEL MANAGEMENT as well as two pending applications for ELITE MODEL LOOK and ELITE MODEL LOOK (stylized). Complainant is also the registrant of the domain name <elitemodel.com> which Complainant has used on the internet since it acquired the domain name in 1996. Respondent’s domain name in dispute <elitemodels.com> was created on February 6, 2005. Respondent’s domain name <elitemodels.net> was created on August 17, 2005.

Complainant submits that the domain names in dispute <elitemodels.com> and <elitemodels.net> are identical or confusingly similar to Complainant’s trademarks for or including ELITE. Complainant submits that the domain names in dispute are comprised of the prefix ELITE and the suffix MODELS with the addition of the gTLD “.com”and “.net”. One of Complainant’s registered trademarks and two of the pending trademark applications include the words “elite” and “model.”

Complainant submits the use of lower case lettering in a domain name does not avoid a finding of confusingly similar. Complainant further submits that the pluralization of a domain name does not avoid a finding of confusingly similar. Complainant further submits that the additions of a generic word such as “models” to the registered trademark ELITE does not avoid a finding of confusingly similar especially where the generic word is descriptive of the nature of the services or goods.

No Rights or Legitimate Interests in respect of the Domain Names

Policy, paragraph 4(a)(ii)

Complainant submits that there is no evidence that Respondent or any of his “businesses” have been commonly known by the domain names in dispute or any variant thereof. Complainant further submits that Respondent is not a licensee of Complainant, has no relationship or association with Complainant nor is he otherwise authorized to use the trademarks for or including ELITE by Complainant.

Complainant further submits that Respondent has not used either of the domain names in dispute lawfully to offer goods or services prior to notice of the dispute. Complainant states that the web page associated with the <elitemodels.com> domain name contains nothing more than what appear to be automatically generated advertisements and articles, few of which are related to modeling. Printouts from Respondent’s website are attached as Annex 11 to the Amended Complaint; printouts of the source code for <elitemodels.com> are attached as Annex 12 to the Amended Complaint. There is no evidence that Respondent has used or has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.

Complainant states that the website associated with <elitemodels.net> contains only a list of automatically generated hyperlinks to other websites with no substantive content whatsoever. (Annex 11(a) to the Complaint).

Complainant further submits that Respondent, using the user name “britishbulldog,” admitted that the website identified by the domain name <elitemodels.com> was an adsense site stating that he owns a website at “wwwelitemodels.com” as a simple adsense site generating USD500 a month mainly through typeins. Respondent then indicates that he wants to turn the site “into more of a cash machine” and believes that this is possible because the domain “was once formally owned by the biggest and oldest model management company in the world who own the domain <elitemodel.com>…but relinquished <elitemodels.com>.” This is a clear reference to Complainant. (Annex 13 to the Amended Complaint).

Complainant submits that Respondent cannot present evidence of a fair use or non-commercial use of the domain names in dispute under paragraph 4(c)(iii) of the Policy because the use of the domain names in dispute to direct users to the websites of others does not constitute a legitimate interest. Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-0143. Complainant further submits that use of the websites associated with the domain names in dispute as a search portal that contains advertising and links that divert internet users to commercial websites clearly does not constitute fair or noncommercial use.

Registered and Used in Bad Faith

Policy, paragraph 4(a)(iii)

Complainant states that in a posting on the December 11, 2005, Respondent using the user name “britishbulldog” states that the domain name <elitemodels.com> “was once formally owned by the biggest and oldest model management company in the world who own the domain “elitemodel.com”…but relinquished ‘elitemodels.com.’”

Complainant submits that Complainant’s trademarks for or including ELITE had been widely advertised in association with the offering and promotion of its services since 1977, and used on web pages associated with the domain name <elitemodel.com> since 1996. Complainant submits that having regard to Complainant’s well-known modeling business conducted in association with trademark for or including ELITE Respondent registered the domain names in dispute in bad faith.

Complainant submits that Respondent acquired the domain names in dispute with knowledge of Complainant’s services relating to fashion models and fashion modeling conducted in association with the trademarks for or including ELITE. Complainant further submits that the domain name <elitemodels.com> in association with a web page containing links to third parties who provide model services some of which may be competitors of Complainant, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The said conduct of Respondent constitutes evidence of bad-faith use of the domain name <elitemodels.com>. Paragraph 4(b)(iv) of the Policy. Complainant learned of Respondent’s registration of the second domain name, <elitemodels.net>, because Respondent called attention to that domain name in the Response to the original Complaint. While Respondent argues that the registration of the domain name <elitemodels.net> on August 17, 2005, somehow strengthens his purported right to own the domain names in dispute, his registration and use of a second domain was for no purpose other than further diversion of Complainant’s customers simply compounding his bad faith.

Complainant relies on the facts that in Respondent’s posting on December 11, 2005, Respondent using the user name “britishbulldog” states that he owns “a website called ‘elitemodels.com’ just a simple adsense site generating $500 a month mainly through typeins it receives 12000 uniques a month.” Respondent then indicates that he wants to turn the site “into more of a cash machine” and believes that this is possible because the domain “was once formally owned by the biggest and oldest model management company in the world who own the domain <elitemodel.com> but relinquished <elitemodels.com>.” This is a clear reference to Complainant. In the same December 11, 2005, posting Respondent also states that “there is more potential with this domain and I need to exploite (sic) it the best way I can.” Respondent’s reference to exploiting the site, in context, is a clear indication of a bad-faith intention to monetize his site at Complainant’s expense. (Annex 13 to the Amended Complaint).

Complainant states that Respondent has offered the domain name <elitemodels.com> for sale through Sedo. (Annex 15 to the Amended Complaint). Complainant further submits that by an email signed by Respondent on February 28, 2006, directed to numerous corporations in the fashion model industry Respondent offered the domain name <elitemodels.com> for sale. (Annex 14 to the Amended Complaint).

This email of February 28, 2006, includes the following statements: “Elitemodels.com the most famous name in modeling is now up FOR SALE, the website itself is Temporary just to park the domain. This is a true once in a lifetime opportunity which generates thousands of unique visitors without using a cent in advertising, in fact you probably advertise on the site through google adsense.”

Complainant submits that Respondent is using domain names in dispute that incorporate “elite” and “elite model” intentionally seeking to exploit user confusion by diverting Internet users away from the legitimate Elite website to Respondent’s website, for his own benefit and commercial gain, such as by providing advertisements that link to third parties who provide model services, some of which may be competitors of Elite. See Viacom International Inc. v. Matrix Management and T. Parrott, WIPO Case No. D2001-1442. As examples, there are currently links on Respondent’s <elitemodels.com> site to <modelsearchamerica.com> (a talent search service), <casting-call.us> (a service providing listings for casting calls) and <fame-by-phone.com> (a similar service).

Complainant submits that by deliberately profiting from the diversion of user’s familiar with Complainant’s trademarks for or including ELITE Respondent has acted in bad faith.

B. Respondent

Identical or Confusingly Similar

Policy, paragraph 4(a)(i)

Respondent submits that the generic nature of the words “elite” and “models” is such that the Policy allows people to freely register domain names that use the generic words.

Respondent further submits that although Complainant has been around for 25 years or so, Complainant has no registered trademarks for ELITE MODEL or ELITE MODELS in the United States or European countries.

Respondent states that the United Kingdom Patent Office which applies trademark law which conforms to E.U. legislation will not and does not recognize ELITE MODELS as words or marks which can be trademarked. Attached as Annex 1 to the Response is a letter from the U.K. Patent Office to Respondent advising on the registrability of the mark ELITE MODELS.

Respondent submits that contrary to Complainant’s submission it cannot have common law rights in ELITE MODEL or ELITE MODELS as the marks are comprised of descriptive words.

Respondent further submits that Complainant has not policed its trademark for or including ELITE in respect of modeling services and the words have therefore become generic. (Annexes 1, 2 & 3 to the Amended Response which refer to companies using the words “elite”, “model” and “modeling”).

Respondent further submits that the decisions relied on by Complainant relating to confusingly similar have no bearing to the facts in this dispute.

Rights or Legitimate Interests in respect of the Domain Names

Policy, paragraph 4(a)(ii)

Respondent states that Complainant registered the domain name <elitemodels.com> in 1996, but let the domain name expire in February 2005 as it was no longer in use. The actions of Complainant show that the domain name was not important to Complainant.

Respondent further submits that he is the owner of the domain name <elitemodels.net> which empowers his claim to <elitemodels.com> and proves that he has a legitimate interest in the domain names in dispute unlike Complainant. The fact that Respondent disclosed the ownership of <elitemodels.net> to Complainant in the original Response shows honesty and integrity and proves that Respondent has a legitimate interest in the domain names in dispute.

Respondent states that he is not a licensee of Complainant and does not intend to be a licensee as Complainant holds no trademark rights relevant to the domain names in dispute.

Respondent states that the website associated with the domain name <elitemodels.com> contains very valuable information for new models. The offering of goods and services on the website associated with the domain name is not required, especially where the mark is generic. Zero International Holding v. Beynoet Services, WIPO Case No. D2000-0161.

Respondent submits that he has every right to use ELITE MODELS on his website as does everybody else in the world as the words “elite” and “models” are generic words in the English dictionary. Soccerzone Inc. v. NBA, Inc., NAF File No.94361.

Registered and used in Bad Faith

Policy, paragraph 4(a)(iii)

Respondent states that the domain names in dispute were bought specifically to develop into the world’s biggest model portal. Respondent is a director of a large company in London and trades domains as a hobby. Respondent recently assigned a web developer to design the website as a site for fashion modeling, but it has now been put on hold. (Annex 5 to the Amended Response).

Respondent states that since he acquired the domain names he has had 25 offers to purchase the domain names. (Annex 5 to the Response). Respondent states that it is clearly not bad faith to hold or offer to sell domain names which are comprised of descriptive or generic names. Fifty Plus Media Corporation v. Digital Income Inc., NAF File No.94924.

Respondent states that domain names for “elitemodels.gTLD,” (Annexes 8 to 11 to the Amended Response) “elitemodel.gTLD” (Annexes 12 to 15 to the Amended Response) and “elite.gTLD”(Annex 16 to the Amended Response) are registered by a multitude of registrants and many of the above noted domain names are for sale. Respondent submits that the multitude of registrations of the above referenced domain names shows that the words are generic and that Complainant does not have exclusive rights in the trademarks for or including ELITE above or in combination in association with provision of modeling services.

Respondent admits that he did park the domain names in dispute with Sedo and offer the domain names in dispute for sale through Sedo. (Annex 19 to the Amended Response). Sedo is a leading online marketplace for buying and selling domain name websites and for parking domain names to enable domain name owners to monetize the domain names when parked. Respondent states that at the time the new website, intended to be associated with <elitemodels.com>, was about to be developed he received a significant offer for the website. Respondent submits that Complainant made a bid to Sedo for the <elitemodels.com> domain name. Respondent submits that Complainant’s bid for the domain name <elitemodels.com> was turned down and Complainant is now trying to obtain transfer of the domain name under this proceeding. Respondent submits that Complainant’s actions are what is commonly called “reverse domain highjacking.”

Respondent states that as a legitimate owner of generic domain names he has a right to sell the domain names at any time.

Respondent states that the domain name <elitemodels.com> was purchased in good faith from a domain trader for USD 450 with no knowledge of the prior history of the domain name. Respondent states that if the domain name trader was aware of the traffic the domain name <elitemodels.com> was generating, the domain name in dispute would have been sold for at least USD 25,000. Respondent states that the traffic that the domain name <elitemodels.com> could generate only became apparent to him after he parked the domain name in dispute with Sedo. Respondent states that after thorough investigation he then realized that Complainant once owned the domain names in dispute. Respondent states that he initially thought that the traffic was originally coming from Internet users familiar with Complainant’s services and trademarks as alleged in the Complaint (Annex 13 to the Complaint), Dnforum - the place to talk, buy and sell domains. Respondent submits that after further investigation he found that the traffic generated by the domain name in dispute has 504 links (Annex 6 to the Amended Response) and the traffic generated is coming from the 504 links and not from those familiar with Complainant’s trademarks for or including ELITE.

Respondent states that the domain name <elitemodels.com> is not for sale now due to it being redeveloped. Being a businessman Respondent submits that he would sell the domain names at any time if the right offer came along.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that domain names should be cancelled or transferred:

(1) the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain names; and

(3) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the domain names in dispute are confusingly similar to the trademark in which Complainant has rights.

Complainant is the registered owner of United States Registration No.1273825 for the word mark ELITE. This mark is registered for model agency services, with a first use date of March 12, 1979. This trademark was registered on the principal register in the United States on April 10, 1984. Complainant is also the registered owner of United States Registration No. 1155834 for the word mark ELITE MODEL MANAGEMENT. This mark is registered on the principal register in the United States for model agency services with a date of first use of March 12, 1979. Complainant is also the owner of two pending applications for the marks ELITE MODEL LOOK and ELITE MODEL LOOK (stylized) applied for in respect of services in Class 43 of educational services in the nature of a modeling school, modeling for artists and entertainment in the nature of modeling contests. (Annex 8 to the Amended Complaint).

Respondent’s submissions that the registered trademarks are not registrable in the United Kingdom or have become generic are complex issues based on national or European Union law and not within the scope of the Policy. Respondent’s evidence with respect to alleged use of ELITE, ELITE MODEL or ELITE MODELS by others in relation to modeling services is very weak in any event. The Panel finds that Complainant has established trademark rights in ELITE alone or in combination with MODEL in association with modeling agency services and fashion modeling. Respondent’s reference to Complainant at “www.dnforum.com” (Annex 13 to the Amended Complaint) as “…the biggest and oldest model management company in the world who own the domain elitemodel.com” supports Complainant’s submission that Complainant’s trademarks for or including ELITE are well known in relation to modeling services.

The domain names in dispute <elitemodels.com> and <elitemodels.net> are comprised of the prefix “elite” and the suffix “models” together with the gTLD “ .com” or “.net”. The pluralizing of model to models is insignificant. The addition of the generic top level domain name is insignificant. Viacom International Inc. v Erik Peterson, WIPO Case No. D2000-0346.

The Panel finds that Complainant has established that the domain names in dispute are confusingly similar to the trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain names.

Pursuant to paragraph 4(c) of the Policy, Respondent may demonstrate his rights or legitimate interests to the domain names by establishing on the basis of the evidence presented any of the following circumstances, without limitation as to other possible circumstances:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain names, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The burden of proof to establish that Respondent has no rights or legitimate interests remains on Complainant.

Respondent does not carry on business as a modeling agency service. Respondent carries on business with respect to domain names and websites as a hobby. With respect to the websites associated with the domain names in dispute Respondent states in “www.dnforum.com,” “I have a website called ‘elitemodels.com’ just a simple adsense site generating $500 a month…” (Annex 13 to the Amended Complaint). Respondent is not affiliated with Complainant and has never been authorized by Complainant to use the ELITE or ELITE combination trademarks or trademarks confusingly similar thereto.

The domain names in dispute are parked with Sedo and the Internet user entering the domain names in dispute is directed to a website operated by Sedo which includes a series of links to models, modeling and model agencies. Both Sedo and Respondent receive click-through revenue when a visitor clicks on one of the redirected websites sponsored links.

UDRP panels have consistently found that registrants that “park” their domain names using Domain Sponsor or other redirecting services have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain names in dispute. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Wal-Mart Stores, Inc. v. Terry Davies, WIPO Case No. D 2006-0031; Aliance & Leicester Plc. v. Henao Berenice, WIPO Case No. D2005-0736.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence Respondent has ever been commonly known by the domain names in dispute.

With respect to paragraph 4(c)(iii) of the Policy, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain names in dispute.

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain names in dispute.

C. Registered and Used in Bad Faith

Complainant must prove under paragraph 4(a)(iii) of the Policy that: “your domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy provides:

“Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation , if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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) you have 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 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 website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”

Respondent registered the domain name <elitemodels.com> on February 6, 2005. Respondent registered the domain name <elitemodels.net> on August 17, 2005. Respondent entered agreements with Sedo forthwith after registering the domain names. Sedo advertises on its homepage offering parking as follows: “Sedo hosts your site and provides targeted ad links. The revenue per click varies on a domain by domain basis and can be up to 1.50 USD per click.” Sedo developed a web page for <elitemodels.com> with targeted advertisement links relating to modeling opportunities and modeling advice. The web page associated with the domain name <elitemodels.com> was up and running by February 9, 2005, three days after the domain name in dispute was created. Respondent’s website hosted by Sedo currently has links to websites, “Elite Modeling Agency”; “Meet Top Modeling Agents”; and “The 2006 Cute Kid of Year” and many modeling articles. (Annex 11 to the Amended Complaint).

The domain name <elitemodels.net> is also parked with Sedo for monetization purposes.

Respondent is offering both the domain names in dispute for sale. In an e-mail signed by Respondent dated February 28, 2006, Respondent sent numerous companies involved in fashion modeling an offer to purchase the domain names in dispute stating: “Elitemodels.com the most famous name in modeling is now up FOR SALE, the website itself is Temporary just to park the domain. This is a true once in a lifetime opportunity…” (Annex 14 to the Amended Complaint).

The domain names in dispute were also on sale at “www.sedo.com” on February 20, 2006. (Annex 15 to the Amended Complaint).

The domain names in dispute involve pluralizing of Complainant’s trademarks for or including ELITE. The offer for sale of the domain name <elitemodels.com> directly to companies in the fashion model industry and the offer for sale of the domain names in dispute through Sedo show that Respondent registered the domain names in dispute for the purpose of renting, sharing or selling the domain name registrations to a competitor of Complainant (see Annex 14 of the Amended Complaint) for valuable consideration in excess of Respondents documented out- of- pocket cash related to the acquisition of the domain name in dispute. Paragraph 4(b)(i) of the Policy. Alliance & Leicester Plc v. Henao Berenice, WIPO Case No. D2005-0736.

The Panel also finds that Respondent, through its associate Sedo, is working in a coordinated fashion to use the confusingly similar domain names to attempt to attract for commercial gain Internet users to the websites associated with the domain names <elitemodels.com> and <elitemodels.net> by creating a likelihood of confusion with Complainant’s marks for or including ELITE as to source, sponsorship, affiliation or endorsement of the website in dispute. (Paragraph 4(b)(iv) of the Policy).

Respondent’s web page associated with the domain name <elitemodels.com> incorporates active links to websites titled “Modeling Articles”; “Fashion News”; “Elite Modeling Agency Ny”; “Meet Top Modeling Agents”; “Becoming a model” etc. (Annex 11 to the Amended Complaint). These links include links to Complainant as well as websites of Complainant’s competitors.

Respondent’s web pages associated with the domain name <elitemodels.net> include active links to various websites titiled “We Need Models”; “Latin Models, links to great dating services”; “Nude Models”; “Canadian Models Wanted, Film, TV and magazine modeling”; “New modeling jobs posted daily” and many other links. (Annex 11A to the Amended Complaint).

With respect to the intention of Respondent, the Panel agrees that intention should be determined by an objective test. As stated in Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, “the proper test in this Panel’s view, is whether the objective consequences or effect of the Respondent’s conduct is a free-ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.”

Paragraph 4(b)(iv) states that “using” the domain name to divert Internet users (relating back to 4(b) “shall be evidence of the Registration and use of the domain name in bad faith.” See Park Place Entertainment Corporation v Anything.com Ltd., WIPO Case No. D2002-0530. As stated in the Park Place Entertainment Corporation decision, “the fact that a third party is effectively operating the website on behalf of Respondent, and making payments to the Respondent on the basis of that use, does not insulate Respondent from the conduct of its authorized agent.”

The “using” of the domain names to divert users is sufficient evidence of the registration and use of the domain names in bad faith and the evidence provided by Respondent is insufficient to rebut this evidence.

The Panel therefore finds that Complainant has proven that the domain names have been registered and are being used in bad faith.

D. Reverse Domain Name Hijacking.

Given the outcome of the decision, the Respondent’s allegation of reverse domain name hijacking is refused.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <elitemodels.com> and <elitemodels.net> be transferred to Complainant.

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Ross Carson
Sole Panelist

Dated: May 15, 2006