5.3 In addition to their registered trademarks, the Complainants claim they also have “very strong common law protection in their unregistered ELITE trademarks” and they provide evidence of the Elite group’s extensive use of the ELITE mark. They also provide details and cite case law from the English courts and OHIM regarding the elements of the English law tort of passing off.

5.4 The Complainants also claim substantial goodwill and reputation in a logo comprising the word “elite” in figurative text (“Elite Logo”), designed for the group in the 1970s. That logo also forms the upper part of the above listed figurative registered trademarks.

5.5 The Respondent is said to have “totally misappropriate[d] the Complainants’ ELITE trademarks… and [on the website operating from the Domain Name] represents itself as being affiliated with the Complainants and offers Complainants’ models’ services (!) in a most untrue and disgusting way”. This is said to lead to a risk that Internet users could believe the Respondent and its website are related to the Complainants and that the Complainants are in some way associated with the “illegal activities” (i.e. the control or promotion of prostitution) the Complainants allege are promoted on that website.

5.6 The only differences between the Domain Name and the Complainants’ ELITE marks is the suffix “.cc” and the descriptive term relating to the field in which the Complainants operate, i.e. models. The Complainants submit that the “.cc” suffix does not render the Domain Name different from the Complainants’ ELITE trademarks and cite ACCOR v. Winston Minor, WIPO Case No. D2003-1002. Further it is the Complainants’ case that the fact that the Domain Name incorporates their ELITE trademark in its entirety (some of which trademarks include the word “model”) into the Domain Name is sufficient to establish confusing similarity (as illustrated by 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). The Complainants also cite various UDRP cases in support of their contention that the mere addition of a descriptive word to an identical trademark in a domain name does not avoid confusion between the mark and the domain name (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, Expedia, Inc, v. European Travel Network, WIPO Case No. D2000-0137, Expedia, Inc. v. European Travel Network, WIPO Case No. D2001-0329, Meon Travel Limited v. Lawrence Snare, WIPO Case No. D2004-0831 and ACCOR v. Park Junghee, WIPO Case No. D2004-0478). Further, the Complainants point out that the word “model” in the Domain Name is a reference to exactly the type of business the Complainants are engaged in and is likely to increase rather than decrease the confusing similarity. Finally, the Complainants point to their own domain names (and popular websites) which use the words “elite” and “model” (<elitemodel.fr> and <elitemodelworld.com>).

5.7 For these reasons the Complainants claim the Domain Name is confusingly similar to the ELITE trademarks in which the Complainants have relevant rights.

Rights or Legitimate Interests

5.8 The Complainants claim that the Respondent does not have a registered trademark in the “Elite Ltd.” name (and they provide print-outs showing the negative results of these searches undertaken on the United States of America, United Kingdom and World Intellectual Property Office Trademark databases). Further, the Respondent does not appear to be known by the Domain Name and, it is said, could not be so known because the words “elite” and “model” are “solely associated with the Complainants”.

5.9 According to the Complainants’ case, the Respondent has and is not using the Domain Name for a bona fide offering of goods or services. Rather, it is using the website to which the Domain Name points to infringe the Complainants’ trademark rights by, in particular, reproducing the Complainants’ Elite Logo at the top of each page of the website. Further it is said to be taking advantage of the Complainants’ famous name to promote alleged “illegal activities” (i.e. the control or promotion of prostitution). The Complainants’ are particularly concerned by the potential reputational damage they could suffer by being perceived to be linked to prostitution and they exhibit news articles showing how when faced with such allegations in the past they have fought to defend their reputation.

5.10 The Complainants submit that the Respondent’s registration is preventing them from using the Domain Name and diverts Internet users seeking the Complainants’ to the Respondent’s website (and the alleged damaging and illegal material thereon) which website misrepresents itself as being associated with the Complainants.

5.11 Finally, the Complainants submit that the Respondent knew of the Complainants when registering the Domain Name, as shown by the Respondent’s use of the Complainants’ Elite Logo on its website.

Registered and Used in Bad Faith

5.12 The absence of a legitimate interest and the presence of bad faith are linked and the Complainants rely on their submissions above to demonstrate the Respondent’s bad faith.

5.13 According to the Complainants’ case, the Respondent has intentionally attempted to attract, for commercial gain and for an infringing purpose, Internet users to its website, by creating a likelihood of confusion between the Complainants’ trademarks and the Domain Name and corresponding website. The infringing use is said to include the Respondent’s use of the Complainants’ Elite Logo on its website and also by its “referring to the Complainants’ employees”.

5.14 Further, the Complainants contend that the Respondent registered and has used the Domain Name to benefit unfairly from the reputation of the Complainants and their trademarks and, by virtue of the “degrading and even illegal” activities promoted on the Respondent’s website, risks prejudicing the Complainants’ by association. The Complainants claim that it is very hard to imagine that the Respondent could have lacked knowledge of the Complainants and their trademarks when registering the Domain Name and claim that given the fame of their “elite” name and business such knowledge should be imputed to the Respondent (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sociйtй des Hфtels Mйridien v. ABC-Consulting, WIPO Case No. D2004-0792). Moreover, the Complainants cite several UDRP cases in support of their contention that registration of a domain name that is identical to a famous trademark (such as the ELITE mark) is in itself evidence of bad faith PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561, Sociйtй des Hфtels Mйridien v. ABC-Consulting, WIPO Case No. D2004-0792 and Sociйtй des Hфtels Mйridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849. Furthermore, the Respondent is actually using the Complainants’ Elite Logo on his website.

5.15 Therefore the Complainants conclude that the Domain Name has been registered and used in bad faith.

B. Respondent

5.16 The Respondent did not reply to the Complainants’ contentions and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules. The Panel considers the implications of this below.

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

6.2 This Panel does not find there are any exceptional circumstances within Paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainants to make out their case in all respects under the Rules set out in Paragraph 4(a) of the Policy. Namely, the Complainants must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

6.4 However, under Paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.5 The Complainants have provided a list of worldwide registered word and design trademarks incorporating the word “elite”, often together with the word “model” which are said to be owned by the Complainants and/ or Elite group. In particular, the Complainants rely upon the six International or Community trademarks described above, with respect to which they have provided print-outs from the relevant trademark databases.

6.6 Of course, the Complainants only need show that one of these marks is confusingly similar to the Domain Name to meet Paragraph 4(a)(i) of the Policy. The Panel therefore chooses to first examine the two figurative marks (No. 442385 and No. 576188). These two marks are the same and consist solely of words in stylised text. Specifically, they consist of the Complainants’ Elite Logo in large letters and below that Logo in small letters the words “Elite Model Management”. The differences between these marks and the Domain Name are (i) the “.cc” suffix (ii) the extra word “management” (iii) the repetition of the word “elite” and (iv) the stylised text. In the opinion of the Panel, notwithstanding these differences the Domain Name is confusingly similar to these marks. The marks, although not word marks nevertheless comprise nothing other than text. The most distinctive element of the marks is the word “elite” in large letters. The Domain Name comprises the word “elite” combined with the word “model” but model is merely a descriptive word which suggests services which fall within the scope of the classes for which the marks have been registered. Further, the words “elite model” are also to be found in smaller text in the marks themselves.

6.7 Accordingly, the Complainants have satisfied the requirements of Paragraph 4(a)(i) of the Policy. The Panel does not therefore need to consider whether the remaining registered marks relied on by the Complainants are confusingly similar to the Domain Name.

6.8 The Complainants in this case do not just rely upon their registered trademark rights. They also submit that they have unregistered rights in the ELITE mark “in the relevant jurisdictions” and then give a lengthy description of the tort of passing off in English law. Although it is not necessary to determine this for the purposes of making its decision, the Panel elects to consider the Complainants’ alleged unregistered rights.

6.9 It is well established that “rights” for the purposes of Paragraph 4(a)(i) of the Policy include “unregistered trademark rights” insofar as they are recognised in a relevant jurisdiction. Also it has frequently been held in UDRP decisions that where a complainant has sufficient goodwill in England associated with a name that would permit it to bring proceedings under the English law of passing off, that is sufficient to provide relevant unregistered trademark rights for the purposes of the Policy.

6.10 As this Panel has already stated in a number of previous decisions (for example, Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969) it is important that where a complainant claims unregistered trademark rights, that it properly identifies not only the jurisdiction or jurisdictions in which those rights are claimed, but also provides specific evidence as to how it is those rights have arisen in the jurisdiction chosen. Here, the Complainants make frequent references to the Elite group’s world wide reputation but do not specifically focus on the extent of their reputation in England and Wales.

6.11 Nevertheless, in the extensive marketing documentation of the Complainants annexed to the Complaint is what appears to be a description of results of a survey as to “elite brand awareness”. This describes “awareness for buying intentions” in the United Kingdom to be 71%. Further annexes comprise newspaper articles from the UK press in 2001 regarding a libel action brought by the Elite group against the British Broadcasting Corporation (BBC) in relation to a BBC documentary that alleged the Elite group was involved in sexual exploitation of its models and that models were engaged in drug abuse and underage sex. The press coverage is extensive and clearly the story captured the public imagination. On the basis of this information the Panel does not think that there is any real doubt in this case that the Complainants have unregistered rights in the name ELITE to at least some degree in England.

6.12 Further in support of this finding, the Complainants’ assertions as to world wide fame are not contested. The Complainants also contend that their modelling agency is renowned for the “global stars” on its books. From the material appended to the Complainant these stars would appear to include such names as Claudia Schiffer, Cindy Crawford, Naomi Campbell and Linda Evangelista. These names are well known in the UK.

6.13 The Panel is therefore satisfied in the absence of any evidence or contentions to the contrary that the Complainants have unregistered rights in the ELITE name for the purposes of the Policy.

6.14 The Panel also has little difficulty in this case in concluding that the Domain Name is confusingly similar to these unregistered rights. The Domain Name is the word “elite” with the word “model” and the suffix “.cc”. The word “model” is an ordinary word that describes the pre-dominant business activities of the Complainants and it is in respect of these activities that the ELITE name is known.

6.15 Accordingly, the Panel concludes that the Complainants on the basis of their unregistered trademark rights in England and their registered trademarks No. 442385 and No. 576188 have made out Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.16 Here, the Domain Name comprises the phrase “elite model” and links to a website that the Complainants’ allege is effectively promoting prostitution under the guise of an exclusive escort agency. The Panel has described the website above and, although the website does not go so far as stating that “Elite management” arranges sexual encounters for its clientele, the Panel agrees with the Complainants that that is the clear overall impression given.

6.17 The website prominently displays the Complainants’ Elite Logo and the Panel accepts that, as the Complainants contend, the Respondent is attempting through the use of the “Elite” name and by using the Complainants’ distinctive Elite Logo to give the impression that the “escort agency” is affiliated with the Elite group and that possibly the Elite group’s models are available for prostitution. Whether the Respondent is actually supplying these services is not clear. The Respondent may be conveying that impression for other reasons (for instance to obtain membership fees from individuals who apply to the apparent “escort agency” or to obtain such individual’s valuable personal information). However, whatever the actual motive of the Respondent, it does not matter. The Panel accepts in the absence of any Response that the Respondent has chosen the “elite” and “elite model” names in order to take advantage of an association with the Complainants which the Complainants have not authorized. Such use of the Domain Name cannot provide rights or legitimate interests for the purposes of the Policy.

6.18 Accordingly, in the absence of any explanation from the Respondent in relation to its activities, the Panel concludes that the Complainants have made out their case under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.19 The Panel accepts the Complainants’ submission that the questions of rights or legitimate interests and bad faith are entwined in this case.

6.20 As the Panel explains above, it would appear from the “escort agency” website linked to the Domain Name that the Respondent has made infringing use of the Complainants’ distinctive Elite Logo and has generally sought to give the impression that the “escort agency” is affiliated with the Elite group and possibly that the Elite group’s models are available for prostitution.

6.21 Further, the fact that on its website the Respondent uses the Complainants’ Logo shows that the Respondent has been aware of the Complainants’ business at least since that website was set up. This, coupled with the undisputed worldwide reputation of the Complainants’ business and the nature of the Domain Name itself all strongly suggest that the Respondent was aware of the Complainants’ business at the time that the Domain Name was registered and that the Respondent registered the Domain Name with both the infringing use and the intention to misrepresent an association with the Complainants’ in mind.

6.22 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the complainant’s mark as to the source of a website. The activities of the Respondent in this case appear to fall squarely within this aspect of the Policy.

6.23 In the circumstances, the Panel concludes, in the absence of any evidence to the contrary, that the Respondent has both registered and used the Domain Name in bad faith. Accordingly, the Complainants have made out the requirements of Paragraph 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 name, <elitemodel.cc>, be transferred to the Complainants.

Matthew S. Harris
Sole Panelist

Dated: November 1, 2007

Источник информации: https://internet-law.ru/intlaw/udrp/2007/dcc2007-0004.html

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