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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Elite Model Management, Elite Licensing Company S.A. v. WWW Enterprise Inc. Kerryweb Enterprise, Inc.

Case No. D2007-1216

1. The Parties

The Complainants are Elite Model Management, Paris, France and Elite Licensing Company S.A., Fribourg, Switzerland, represented by Cabinet Degret, France.

The Respondents are WWW Enterprise., Inc., Array Los Angeles, California, United States of America and Kerryweb Enterprise, Inc., Santa Fe Springs, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <eliteelegance.net> and <elitemodels.org> are registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The electronic copy of the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2007 and the hard copy on August 17, 2007. On August 20, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com the request for registrar verification in connection with the domain names at issue. On August 27, 2007, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and provided the contact details. The Complainant filed two voluntary amendments to the Complaint dated August 21, 2007 and September 12, 2007. The Center verified that the Complaint together with the amendments to 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 September 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2007. The Center communicated with the Registrar regarding any changes of registrants of the domain names between the dates October 8, 2007 to October 15, 2007. The Registrar confirmed that the Respondents are the registrants.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 24, 2007. 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 Complainants are entities of the Elite Group of companies. Elite Model Management, is a French company with its head office in Paris, France and the Elite Licensing Company S.A., is a Swiss joint stock company with its headquarters in Fribourg, Switzerland. Both entities are referred to in the present case as “the Complainant”.

The Complainant owns several trademarks comprising of the term “Elite”. A list of its notable trademarks includes:

- International Trademark No. 442, 385 for the ELITE mark, registered, December 1978 in Classes 35, 41 and 42.

- CTM No. 345, 926 for the Logo ELITE MODELS FASHION, registered since August 31, 2004 in Classes 3, 14, 16, 18, 25, 28 and 40.

- US national trademark No.2,878,307 for ELITE MODEL STUDIO, registered since August 31, 2004 in Class 3.

- Korean national trademark No. 41-0034113 for ELITE JOHN CASABLANCA, registered since January 10, 1997 in class 41.

- Korean national trademark No. 40-0505256 for ELITE MODELS, registered since November 2, 2001 in class 9.

- Korean national trademark No. 41-0053251 for ELITE MODEL LOOK, registered since February 10, 1999 in Class 41.

The Respondents are WWW Enterprise, Inc. of the United States of America, and Kerryweb Enterprise Inc., of the United States of America. The Complainants have researched and found various aliases which are allegedly adopted by the Respondents. Some of the Respondent’s alternate identities are “Kim Taeho” of Republic of Korea, Steve Kerry, Philippine, Inc., and North West Enterprise. Inc. The Complainant has listed the UDRP cases where the Respondent, WWW Enterprise, Inc. has been a party. While the Panel has noted the research done by the Complainant and recognizes that the Respondent has been involved in several similar disputes and has adopted various pseudonyms. The Panel finds that in the present case only the present registrants can be named as Respondents to the case.

The disputed domain names <elitemodels.org>, and <eliteelegance.net> were respectively registered on March 30, 2002 and February 25, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant is a world famous modeling agency run by the Elite Group of companies. The Elite agency was established in the year 1972, and is a company registered in Paris, France. Elite Model Management, Elite Licensing Company S.A and Elite Management Corp., are all part of the Elite Group.

The Complainant is well known in the world of high fashion and has launched several famous modeling icons such as Claudia Schiffer, Cindy Crawford, Karen Mulder, Nastassia Kinski and Naomi Campbell. The Complainant claims that its brand enjoys an average global brand awareness rate of 67 percent among people who are under 25 years of age. The Complainant states its business covers the five continents with agencies in about forty countries. Its official websites are “www.elitemodel.fr” or “www.elitemodel-world.com” and the website of Elite Model Management Corp. is “www.elitemodel.com”.

The Complainant claims its world wide fame is gained through its widely publicized activities, notably its “Model Look” contest. The contest takes place in about fifty countries and attracts modeling talent through out the world. The number of participants run to about 350,000 each year. The event is covered by the media including newspapers, television and the Internet. The Complainants have filed documentary evidence of the media coverage of its activities over several years, including its various activities in the Republic of Korea and the Elite Model Look contest French final for the previous year.

The Complainant states that the group has vastly expanded its trademark over the last decade. The Complainant’s ELITE brand has extended into many other areas apart from modeling and is also used for marketing merchandise. Elite branded goods range from beach wear, shoes, bags, sunglasses and watches to perfumes and cosmetics.

The Complainant claims its trademark ELITE are world famous and well established and has a distinctive verbal element. The Complainant further states its fame has been recognized in a prior WIPO decision, Elite Model Management Corporation v. Wesley Perkins, WIPO Case No. D2006-0297. The use of its famous Elite trademark by the Respondent, as per the Complainant is not authorized by the Complainant or any of their subsidiaries, affiliates or representatives. Further the Respondent’s web site refers to the Ford Model Agency, a direct competitor of the Complainant.

The Complainant cites its various trademark registrations including its Korean trademark registrations, as it believes that the Respondent’s true residence is the Republic of Korea. This is inferred from the IP address of the domain names which resolves to a server in the Republic of Korea. The Respondents using the Complainants trademarks in pay per click sites is unjustly enriching itself at the expense of the Complainant’s mark.

The Complainant claims that it was in July 2007 when it first discovered the domain names had been registered by the Respondent. The Complainant further states that it has found a total of 46,767 domain names registered in the name of the Respondent, which were sampled by the Complainant. Some of these domain names are <0-google.com>, <0- google.net>, <0-google.org>, <amaz0n.net>, <adidass.net>, <easyjetairs.com> and <micfosoft.com>.

The Complainant contends that the Respondent is actively engaged in domain name piracy on a large scale and exploits these to derive revenue through pay-per-click sites. The Complainant vividly describes the Respondents activities as having “more alternate identities than a story book secret agent”, and that the Complainant and others have been unable to confirm or verify the true identity of this person or entity.

The Complainant states that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. To demonstrate its prior rights in its ELITE mark, the Complainant has furnished evidence of numerous registered trademarks all over the world. The Complainant additionally urges that besides its registered marks it can rely on its common law rights. It claims common law rights in its marks and discusses the common law tort remedy of “passing off”. The Complainant refers to several cases and cites in particular the case of Rickett & Colman Ltd. v. Borden Inc. [1990] 1 RPC 134 1, which discusses the “classic trinity” or the three elements of passing off, which are: reputation, misrepresentation and damage to goodwill. The Complainant claims that all these elements are present in this case and this could therefore give rise to an action for passing off. The manner in which the marks are presented in the domain names is deceiving the public to thinking that the Respondent’s website is related to the Complainant and it therefore amounts to misrepresentation and “passing off” according to the Complainant.

The Complainant states that the disputed domain names are confusingly similar to its marks for these three reasons:

First, the domain names completely reproduces the ELITE mark and uses generic terms which are descriptive of the Complainant’s business. The Complainant contents that the suffixes are of no significance to determining similarity as gTLDs are a requirement for domain names, and refers in this regard to Accor v. Winston Minori, WIPO Case No. D2003-1002.

Second, the Complainant argues that the domain name incorporates the entire mark. This is because the Complainant owns several marks which include the words “Elite” and “Models” hence the domain name <elitemodels.org> depicts the Complainant’s mark in its entirely and is therefore identical to the Complainant’s mark. The Complainant cites Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and QSoft Consulting Limited v. Bernard Lynch D/B/A Rainbow Globe, WIPO Case No. D2004-0668.

Third, the Complainant asserts that the generic terms “model” and “elegance” used in the domain names directly describe the services of Complainant and therefore enhances the confusing similarity between the domain name and the marks. It cites Red bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709 and other WIPO Cases which have held that confusion is enhanced and the public can be mislead when domain names incorporate generic terms which are likely to be affiliated to the Complainants. The Complainant also refers to another similar decision made against the very same Respondent in ACCOR v. Nick Chammbers, WIPO Case No. D2005-0012. The Complainant therefore claims the domain names are identical to its marks, if not at least confusingly similar to its marks.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the domain names for the reasons:

That prior to the dispute the Respondents did not use the domain names for a bona fide offering of goods or services nor made any preparations to do so. The domain names are parked in portals where they derive revenue from a pay per click sites. This is not a legitimate or bona fide use of the domain names.

The Complainant states that the Respondent is not commonly known by the domain names. It does not have any trademark rights unlike the Complainant which has well established rights. The Complainant emphasizes that it has never assigned, licensed, sold or transferred any rights in the ELITE mark to the Respondent, nor granted it permission or consent to use the marks or any similar mark in domain names.

It is contended by the Complainant that the Respondents do not make non commercial fair use of the domain names and instead it prevents the Complainant from using the domain names. It is diverting Internet users looking for the Complainant’s website for information regarding the Complainant’s activities. This according to the Complainant does not constitute legitimate use of the domain names.

It is further argued by the Complainant that if the Respondent had legitimate rights in the domain names it would not be hiding its true identity or giving incomplete or false contact information. Further the Respondent ought to have been aware of the Complainant’s marks which are world famous. The Respondent has registered the domain names with the intention of infringing the marks of the Complainant. These aspects, according to the Complainant, are indicative of the Respondent’s lack of legitimate rights or interest in the disputed domain names.

The Complainant asserts that the Respondent has registered and used the domain names in bad faith by providing false contact information to the Registrar, which is not only indicative of bad faith but is contrary to Online NIC’s terms of use and cites Societe Des Hotels Meridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201

Bad faith registration and use is apparent as the domain names follow the same pattern as the ones registered by the Complainant such as <elitemodels.fr>. According to the Complainant the Respondent has, intentionally created a likely hood of confusion with the Complainant’s marks as to the source of sponsorship, affiliation or endorsement of the domain names and the websites linked to it. The Respondents derive unjust enrichment from pay per click advertisements, which is to the detriment of the Complainant’s goodwill and reputation and dilutes the marks of the Complainant.

The Complainant argues that registration of domain names using its famous mark ELITE without authorization is in itself bad faith, and relies on PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561, which held that registration of a domain name using a famous mark itself constitutes bad faith. Reference is also made to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, where it was held that in the absence of contrary evidence, an inference can be drawn that the Respondent had knowledge of the mark at the time of registration. This is particularly so where a mark has acquired widespread fame due to the Complainant’s use of the mark over a long period.

The Complainant emphasizes that the Respondent was aware of the Complainant’s marks due to its fame and that the exact generic terms which are relevant to the activities of the Complainant are used in these domain names. Even a search would have revealed the Complainant’s prior rights in the marks.

The Complainant reiterates that the Respondent is involved in “massive cyber-squatting” and that many UDRP cases have been filed against the very same Respondent. These facts indicate bad faith registration and use of the domain names.

The Complainant requests the domain names be transferred

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove the following three elements for the transfer of the disputed domain names:

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

(ii) The Respondents have no rights or legitimate interests in respect of the domain names; and

(iii) The domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is required to establish its rights in the mark under paragraph 4(a)(i) and also has to demonstrate that the domain names are identical or confusingly similar to its mark.

The Complainant has amply established its rights in the ELITE mark by showing its prior rights and its numerous registered marks world wide. Further the Panel finds that use of the ELITE mark by the Complainant precedes the registration of the domain names by several years. Through long usage the term “elite” along with the term “models” has acquired distinctiveness and has come to signify the Complainant and its services and products and is now associated with the Complainant and its business.

The Panel finds that the Complainant registered marks provide ample evidence of its rights and it is therefore not necessary to consider its common law rights in present case. The Panel agrees with the Complainant submission, that it is well established that domain names which completely reproduces the mark and use generic terms which are descriptive of the Complainant’s business are confusingly similar to the marks. See for instance Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

The Panel finds that the Complainant has established its rights in the ELITE mark and that the disputed domain names are confusingly similar to the mark, and fulfilled the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has to make a prima facie case that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii). The Policy paragraph 4(c) sets out the circumstances for the Respondents to demonstrate its rights or legitimate interests. The Respondents did not file a response; hence the Complainant’s assertions remain unchallenged.

The Complainant has put forth the following arguments to show that the Respondents have no rights or legitimate interests in the domain names:

The Respondents are not commonly known by the domain names nor have any corresponding trademark rights in the name. The Complainant on the other hand has well established trademark rights world wide. The domain names are not used for a bona fide offering of goods or services, as the domain names are parked in pay per-click sites to derive revenue which is not legitimate or bona fide use.

The Complainant states that it has never assigned, licensed, sold or transferred any rights in their ELITE mark to the Respondents, nor granted permission or consent to use the marks or any similar mark as domain names.

The Respondents are not using the domain names for non commercial or fair use. The domain names are instead used to divert Internet traffic meant for the Complainant’s website and further it prevents the Complainant from using these domain names. This does not constitute legitimate use of the domain names

The Respondents ought to be aware of the Complainant’s marks which are world famous. If the Respondents had legitimate rights in the domain names they would not resort to using pseudonyms and false contact information to hide their identity.

The Panel finds that the Complainant has made a prima facie case that the Respondents have no rights or legitimate interests in the domain names. There is no evidence on record to show that the Respondents have any rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

The Complainant has to establish that the Respondents have registered and used the domain names in bad faith under paragraph 4(a)(iii) of the Policy.

The Panel finds that the Respondents have provided false contact information and are involved in a pattern of cyber-squatting activity with several UDRP cases filed against the same Respondents. The domain names follow the same pattern as the ones registered by the Complainant which use the generic terms that are relevant to the Complainant’s business. This creates a strong inference that Respondents are aware of the Complainant’s mark and wish to create confusion as it has sponsored links and obtains commercial gains, see for instance Edmunds.com, Inc. v. SIA Bouns, WIPO Case No. D2007-1279. All these facts verify bad faith registration and use of the domain names.

The Panel finds that the Complainant has established that the Respondents have registered and used the domain names in bad faith and has met the requirements of 4(a)(iii) of the Policy.

7. Decision

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 names <eliteelegance.net> and <elitemodels.org>, be transferred to the Complainant.


Harini Narayanswamy
Sole Panelist

Date: November 7, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1216.html

 

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