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 ¡°Center¡±) 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 Center¡¯s 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 ¡®I LOVE¡¯;
2) the Respondent responded to the Center¡¯s 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 ¡°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 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 Respondent¡¯s 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 ladies¡¯ fashion magazine, ¡°ELLE¡±.

The Complainant has also secured numerous trade mark registrations for the mark ¡°ELLE¡± 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 People¡¯s Republic of China, where the Respondent is located, the Complainant has subsisting registrations for the mark ¡°ELLE¡± 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 ¡°ELLEilove¡± and the same stylized version of ¡°ELLE¡± as used by the Complainant in its magazines. At the top of the home page is a reference to ¡°·¨¹ú°®ÁË ±ÜÔпںìFRANCE ELLE BRAND ADMINISTER GROUP (HK) LTD¡±. The Chinese text means ¡°French ¡®AI LE¡¯ [a Chinese phonetic equivalent of ¡°ELLE¡±] contraceptive lipstick¡±.

5. Parties¡¯ Contentions

A. Complainant

The Complainant contends as follows:

(a) that the disputed domain name <elleilove.com> is confusingly similar to the Complainant¡¯s ¡°ELLE¡± mark in that it incorporates Complainant¡¯s mark in its entirety combined with the words ¡°i¡± and ¡°love¡±, and that this is insufficient to distinguish the disputed domain name from Complainant¡¯s mark, because the predominant part of the disputed domain name is ¡°ELLE¡±.

(b) the Respondent has no rights or legitimate interest in respect of the disputed domain name.

(c) the Respondent¡¯s registration and use of the disputed domain name is in bad faith as by registering the disputed domain name with knowledge of the Complainant¡¯s 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 Complainant¡¯s ELLE mark as to the source, sponsorship, affiliation and/or endorsement of the Respondent¡¯s website which promotes merchandise, albeit not related to the Complainant.

B. Respondent

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 Respondent¡¯s 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 faith¡±.

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 ¡°based upon the complaint.¡± 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 ¡°draw such inferences¡± from the Respondent¡¯s failure to comply with the Rules ¡°as it considers appropriate.¡±

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 Respondent¡¯s 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 ¡°ELLE¡±, and accordingly, has rights in the same. This mark has also been registered in Classes 38 and 41 in the People¡¯s Republic of China, where the Respondent is located, since 1996. The Complainant has also sought to argue that the Complainant¡¯s mark is well known.

On the basis of its trade mark registrations, this Panel accepts that the Complainant has rights in the mark ¡°ELLE¡±.

The disputed domain name incorporates the Complainant¡¯s mark in its entirety, and combines it with the generic words ¡®i¡¯ and ¡®love¡¯. 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, ¡®automotive¡¯ did not distinguish a respondent¡¯s domain name <experianautomotive.com> from the complainant¡¯s mark, as the domain name contained the Complainant¡¯s EXPERIAN mark in its entirety.

This Panel would similarly find that the addition of the words ¡°ilove¡± to the Complainant¡¯s ¡°ELLE¡± mark is not sufficient to distinguish it from the Complainant¡¯s 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 Complainant¡¯s ¡°ELLE¡± 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 Respondent¡¯s 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; or

(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 Respondent¡¯s use of the domain name in connection with a bona fide offering of goods or services.

It appears to the Panel that the Respondent¡¯s website provides feminine interest news items and health products. However, there are very extensive references to the mark ¡°ELLE¡± and also in the same typeface as that used by the Complainant. The site is also peppered with references to ¡°International Brand¡± and ¡°France Science¡±.

Since the Respondent has not filed a Response, the Panel would also infer that the Respondent has no trademarks or service marks identical to ¡°ELLE¡± (See Nat¡¯l 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 Complainant¡¯s 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 name.

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 ¡°if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith¡±, 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 complainant¡¯s 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 location¡±

The Complainant asserts that the disputed domain name is registered and used by the Respondent in order to attract Internet users to the Respondent¡¯s site, by exploiting the Complainant¡¯s 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 Respondent¡¯s website and all the circumstances, and in particular, the extensive references to the Complainant¡¯s ¡°ELLE¡± mark on the Respondent¡¯s 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 Complainant¡¯s rights in its ¡°ELLE¡± mark, and to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant¡¯s ELLE mark as to the source, sponsorship, affiliation and/or endorsement of the Respondent¡¯s 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.

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 <elleilove.com > be transferred to the Complainant.

Date: February 24, 2006