WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hachette Filipacchi Presse v. Xubing

Case No. D2005-1248

1. The Parties

The Complainant is Hachette Filipacchi Presse, Levallois-Perret, France, represented by Markplus International, France.

The Respondent is Xubing, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <ellecn.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2005. On December 5, 2005, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the domain name at issue. On December 7, 2005, Network Solutions, LLC. 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 December 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2006.

The Center appointed David Perkins as the sole panelist in this matter on January 16, 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.

4. Factual Background

The Complainant, Hachette Filipacchi Presse, is the publisher of a number of well known magazines, for example, PARIS MATCH and ELLE.

The Complainant is the proprietor of numerous trademarks worldwide for the mark ELLE. Those registrations cover, inter alia, cosmetic products [Class 3]; optical products and contact lenses [Class 9]; printed matter [Class 16]; clothing [Class 25]; telecommunications services (including via the Internet) [Class 38]; and entertainment [Class 41]. Set out below are examples of such registrations for the mark ELLE in China, France, Hong Kong, SAR of China, the European Community, the United States of America and in numerous countries designated by International registrations under the Madrid Arrangement. It will be seen that the earliest of these date from 1966 and that the registrations in Hong Kong, SAR of China and China date from 1985 and 1994 respectively.

Trademark	Territory	Designated Goods & Services	Application Date
ELLE No. R307.983	International	Classes 38 and 41	01/21/1966
ELLE No. R292.472		Classes 2, 3, 4, 5, 8, 9, 11, 14, 16, 17, 28, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42	12/28/1984
ELLE No. 546.813		Classes 38, 41	07/10/1989
ELLE No. 657.541		Classes 16, 38, 41	05/05/1955
ELLE No. 731.669		Classes 38, 41	10/25/1999
ELLE No. 3.475.365 (application)	European Community	Classes 16, 38, 41	10/30/2003
ELLE No. 1.538.354	France	Classes 16, 38, 41	06/27/1999
ELLE No.1.521.708		Class 41	03/30/1989
ELLE No. 94.543.958		Classes 38, 41	11/09/1994
ELLE No. 99.788,691		Classes 38, 41	04/26/1999
ELLE No. 875.899	China	Class 38	11/30/1994
ELLE No. 857.854		Class 41	09/08/1994
ELLE No. 199501741	Hong Kong, SAR of China	Class 16	17/07/1985
ELLE No. 1999B13484AA		Classes 9, 38, 41 and 42	18/09/1996
ELLE No. 1996B03801		Class 25	06/09/1990
ELLE No. 199705786		Class 16	23/07/1993
ELLE No. 200010208		Class 38	11/09/1996
ELLE No. 2002B02141		Class 41	11/09/1996
ELLE No. 1.314.558	United States of America	Class 16	11/10/1983
ELLE No. 2.242.315		Classes 38, 41	05/09/1995
ELLE No. 758.137		Class 16	10/08/2003

The Complainant publishes ELLE magazine internationally in 38 different editions and has some 20 million readers worldwide. The magazine was first published in 1945 and first appeared in China in 1988.

The Complainant also the registrant of the domain name <elle.com> which was first registered in 1996. The Complainant is also the registrant of other domain names where ELLE is the dominant feature. These include <elle.fr>; <elle.es>; <elle.de>; <elle.co.kr>; <elle.co.jp>; <elle.com.tw>; <ellequebec.com> and <ellegirl.com>.

In the absence of a Response, the only known activities of the Respondent are those set out in the Complaint, particulars of which are set out in Section 5 below. The Respondent is the registrant of the domain name at issue <ellecn.com>, which was registered on April 18, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the domain name at issue is identical to its ELLE registered trademarks with the addition of the letters CN, an abbreviation for China. That abbreviation is clearly no more than a geographical indication. The dominant element of the domain name is ELLE.

The Complainant further asserts that ELLE is a famous mark and provides substantial basis for this in the form of circulation figures, press and publicity material etc. The Complaint also exhibits extracts from Court and Trademark Office cases in the Netherlands: Brazil: Canada: Chile: China: the Republic of Korea: Denmark: Ecuador: Spain: France: Greece: Italy: Japan: Peru: Poland: the United Kingdom: the Czech Republic: Romania and Switzerland evidencing recognition of ELLE as a famous,well-known and notorious trademark.

These cases include a translation from the judgment of The People’s Republic of China Second Intermediate People’s Court of Beijing Municipality dated November 14, 2001, which ordered cancellation of the domain name <elle.com.cn> registered by the defendant. In its judgment in favor of the Complainant, the Court found as shown below;

“The Plaintiff has made the ELLE Trademark known to the relevant section of the public and made it enjoy a relatively high reputation through its publication of the magazine name ELLE and its promotion of garment, jewellery and other products bearing the ELLE trademark all over the world including China.”

“Through the publication of the magazine named ELLE and the production, promotion and sale of the products bearing the ELLE trademark, the Plaintiff has made the ELLE trademark known to the relevant section of the public and caused it to enjoy a relatively high reputation.”

The Complainant also refers to the UDRP decision in Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587 wherein 171 domain names were ordered to be transferred to the Complainant, including over 100 ELLE prefixed domain names, amongst them <ellechine.com> and <elleny.com> (for New York).

The Complainant asserts that the domain name at issue is visually, phonetically and intellectually the same as the ELLE trademark and that, given the well-known status of that trademark, the domain name at issue is confusingly similar to it.

The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the domain name at issue. In that respect, the Complainant has not licensed or otherwise authorized the Respondent to use the ELLE trademark. The Complainant exhibits an extract from the Respondent’s website to which the domain name at issue resolves. That extract wrongly refers to the ELLE brand being owned by France Elle Brand Administer Group Ltd, which is said to be headquartered in Paris. The Complainant states that it has commenced a separate action against that entity. The Complainant’s case is that use of the <ellecn.com> domain name in relation to the Respondent’s website is clearly with a view to misleadingly diverting consumers into believing that it is the Complainant’s official website in China. Demonstrably (says the Complainant) the Respondent has no rights or a legitimate interest in that domain name.

As to registration and use in bad faith, the Complainant relies on paragraph 4(b)(iv) of the Policy, namely that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ELLE mark as to the source, sponsorship, affiliation or endorsement of that website and/or the products offered on that website.

In this respect, the Complainant relies on the following:

- first, the well-known status of the ELLE trademark is such that the only conclusion can be that the Respondent deliberately chose to incorporate that trademark in the domain name at issue. In other words, to trade off the reputation of the ELLE trademark and thereby attract Internet users to the Respondent’s website.

- second, the Respondent’s website at <ellecn.com> offers links to the Complainant’s official ELLE websites which is clearly intended to give Internet users the impression that it is affiliated to or in some way authorized by the Complainant.

- third, both the Complainant’s ELLE magazine and the Respondent’s website at <ellecn.com> are about fashion and lifestyle. For example, the Respondent’s website offers online shopping for underwear, contact lenses and eye wear, cosmetics, mobile telephones, clothing etc. This use is for commercial gain and, in addition to misleadingly attracting Internet users, will tarnish and thereby damage the Complainant’s ELLE trademark where such goods are of inferior quality.

B. Respondent

No Response has been filed.

6. Discussion and Findings

The Policy paragraph 4(a) provides that the complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the domain names at issue.

The Policy paragraph 4(b) sets out circumstances which, again 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.

1. Identical or Confusingly Similar

The operative part of the domain name at issue – “elle” – is identical with Complainant’s ELLE trademarks. In addition, the well-known status of the Complainant’s ELLE trademark/brand is such that the domain name at issue comprising “elle” with the suffix “cn” as a geographical indicator is also confusingly similar to the Complainant’s mark. Accordingly, the Complainant satisfies the first requirement of the Policy.

2. Rights or Legitimate Interests

In the absence of a Response, the Complainant has satisfied the burden of demonstrating that the Respondent has no rights or legitimate interests in the domain name at issue. There is no evidence of any of the circumstances identified in paragraph 4(c) of the Policy. Indeed, the evidence from the Respondent’s website described above points overwhelmingly to lack of any such rights or interests. Accordingly, the Complainant satisfies the second requirement of the Policy.

3. Registered and Used in Bad Faith

The evidence of the contents of the Respondent’s <ellecn.com> website shows that the circumstances of paragraph 4(b)(iv) of the Policy are present in this case and, consequently, that the twin requirements of paragraph 4(a)(iii) of the Policy are met. Indeed, it is difficult to conceive of any possible, actual or contemplated use of the domain name that would not infringe the Complainant’s rights under trademark law (See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

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 <ellecn.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Date: January 26, 2006