The Complainants are Elite Licensing Company SA of Fribourg, Switzerland and Elite Model Management of Paris, France, represented by Cabinet Degret, France.
The Respondent is Maria Antonella Corbera of Buenos Aires, Argentina.
The disputed domain name <elite-top.com> is registered with eNom Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2010. On August 26, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 26, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2010.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 24, 2010. 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 Complainant is the owner, amongst others, of the following trademark registrations:
|
TRADEMARK |
REG. No. |
Class (Int’l) |
DATE OF REGISTRATION |
COUNTRY |
|
ELITE MODEL MANAGEMENT (AND DESIGN) |
1,662,492 |
35, 41 and 42 |
September 25 1978 |
France |
|
ELITE MODEL MANAGEMENT (AND DESIGN) |
442,385 |
35, 41 and 42 |
December 6, 2009 |
International Registration |
|
ELITE |
1897117 |
35 |
October 29, 1993 |
Argentina |
|
ELITE (AND DESIGN) |
3,489,294 |
1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. |
March 20, 2007 |
France |
|
ELITE MODELS STUDIO (AND DESIGN) |
3122417 |
3 |
September 24, 2001 |
France |
|
ELITE MODEL LOOK |
3352939 |
8 and 21 |
April 14, 2005 |
France |
|
ELITE MODELS FASHION |
1900289 |
3 |
November 25, 2002 |
Argentina |
|
ELITE MODELS FASHION |
1900292 |
21 |
November 25, 2002 |
Argentina |
The disputed domain name <elite-top.com> was registered on December 2, 2009.
- That the Complainants are part of the Elite Group of companies.
- That the Elite agency, which was established in 1972, is the first model agency in the world.
- That the Complainants are present on five continents, with agencies in almost 40 countries, including Spain, which is the place where the Respondent’s website offers its services.
- That the Complainants organize the Elite Model Look contest worldwide every year.
- That the Complainants ran a television show called “SUPER MODELOS” in Spain, where the Respondent’s website offers its services,
- That the Complainants are the owners of trademark registrations consisting of, or comprising the term ELITE.
- That the notoriety of the Complainants’ trademarks has been recognized by many national courts and administrations.
- That the Brussels Commercial Court issued a decision dated July 31, 2008, regarding the domain name <elite-models.be> which had been registered and used in identical circumstances to the present case, since such domain name had been used for escort services.
- That the Complainants discovered that the disputed domain name <elite-top.com> had been registered by the Respondent, although such registration and the pursuant use of the ELITE trademarks by the Respondent had not been authorized by the Complainants or any of their subsidiaries, affiliates or representatives.
- That the Complainants discovered that the disputed domain name is used to promote a degrading activity.
- That the Complainants are the owners of numerous registrations for the trademark ELITE in approximately 100 countries.
- That the disputed domain name is confusingly similar to the ELITE trademarks since the word “elite”, which is the main and most distinctive element of the Complainants’ trademark, is entirely comprised.
- That the adjunction of the suffix “.com” has no significance and must not be taken into account for the purpose of this procedure.
- That the mere addition of generic/descriptive terms does not cast aside the likelihood of confusion between the prior trademarks and the disputed domain name.
- That the Complainants are well-known for discovering, training and managing the careers of models.
- That the term “top” is descriptive and should not be taken into account when assessing the similarity with the Complainants’ trademarks.
- That the addition of the term “top” enhances the risk of confusion and leads the public to believe that the disputed domain name is linked to, affiliated with, or at least endorsed by the Complainants.
- That the adjunction of a hyphen separating the descriptive term “top” from the dominant and distinctive term “elite” is as minor variation, insufficient, in itself, to suppress the similarity with the prior trademarks.
- That the disputed domain name resolves to an infringement website, displaying material which, in itself, constitutes an infringement on the Complainants’ trademark rights.
- That upon arriving on the website, the user is presented with an adult material notice and a minimum age disclaimer.
- That the Respondent’s activity is to provide female “companionship services”.
- That the Respondent is taking advantage of the Complainants’ fame, to promote degrading activities and to harm the Complainants by creating an association in the public’s mind between the Respondent and the Complainants.
- That the Complainants are notoriously known for having the most beautiful women in the world under contract.
- That the Respondent’s services damage the Complainants’ reputation and goodwill.
- That the Complainants have never assigned, licensed, sold or transferred any rights regarding their ELITE trademarks to the Respondent.
- That the Respondent uses the disputed domain name for an objectionable activity and prevents the Complainants from making a legitimate use of said domain name.
- That the Respondent uses the disputed domain name in order to divert Internet users and, furthermore, potentially endangers young girls seeking information about or even employment with the Complainants when they type the disputed domain name in their web browser.
- That the disputed domain name causes a real prejudice to the Complainants, since Internet users trying to reach the Complainants or trying to find the Complainants’ services, may be led to believe that there is a link between them and the Respondent.
- That the Respondent’s domain name resolves to a website which could be mistakenly attributed to the Complainants.
- That the registration, without authorization, of a domain name that comprises a famous trademark is in itself evidence of bad faith.
- That it is very hard to imagine that the Respondent could have lacked knowledge of the Complainants and their trademarks when registering the disputed domain name.
- That it is rather unlikely that the Respondent would have randomly registered the disputed domain name, comprising a generic/descriptive term which is frequently used in relation with the Complainants.
The Respondent did not reply to the Complainants’ contentions.
In accordance with the Policy, paragraph 4(a), the Complainant must prove that:
(i) The disputed 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 disputed domain name, and
(iii) The disputed domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainants must prove that each of these elements are present.
As the Respondent has failed to submit a Response to the Complainants’ contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Complainants are the owners of several trademark registrations for ELITE, ELITE MODEL MANAGEMENT, ELITE MODELS FASHION and ELITE MODEL LOOK, among others, in the world.
The disputed domain name <elite-top.com> is confusingly similar to the Complainants’ trademark ELITE.
Said trademark ELITE is entirely incorporated in the disputed domain name <elite-top.com>. The addition of the term “top” does not confer a distinctive character to the disputed domain name, in relation to Complainants’ trademarks. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; see also, MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández, WIPO Case No. D2006-1506, Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine, WIPO Case No. D2002-0419 and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.
The addition of a hyphen between the terms “elite” and “top” does not avoid the confusing similarity between the disputed domain name and the Complainants‘ trademarks. See ACCOR v. Winston Minor, WIPO Case No. D2003-1002; National Football League v. Online Marketing International also known as International Marketing Group, WIPO Case No. D2008-2006.
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
Therefore this Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark. The first requirement of the Policy has been fulfilled.
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
The evidence submitted by the Complainants, and which has not been rebutted by the Respondent, shows that said Respondent is using the disputed domain name by having said name resolve to a site that comprises adult material, in connection to “companionship services”. Considering that the Complainants offer services regarding models, under the trademark ELITE which is well publicized, it is clear that the Respondent’s use is certainly not legitimate, nor can it constitute fair use. On the contrary, this use is commercial, it intends to misleadingly divert consumers and it is tarnishing the trademark ELITE.
The record holds no evidence showing any bona fide offering of goods or services on the side of the Respondent. No evidence has been submitted showing that the Respondent has been commonly known by the disputed domain name.
Panels acting under the Policy have held in similar circumstances that registration of a domain name incorporating another’s well-known mark does not confer any rights or legitimate interests in the domain names to respondent, but rather indicates bad faith under paragraph 4(c) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Medisite S.A. R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179).
Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name <elite-top.com>. The second requirement of the Policy has been fulfilled.
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use 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 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) 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 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 website 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 website or location or of a product or service on your website or location.”
The disputed domain name intentionally attracts, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants’ mark ELITE and the Complainants’ business, as to the source, sponsorship, affiliation or endorsement of its website, and the goods and services offered in it. This conduct clearly falls within the scope of paragraph 4(b)(iv) of the Policy and constitutes bad faith. (See Wagamama Limited v. Transure Enterprise Ltd., WIPO Case No. D2008-1200; PNY Technologies Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0544; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.)
Furthermore, the Respondent is using the disputed domain name to offer “companionship services”. Given that the Complainants’ marks and business relate to the modeling industry, this hurts the Complainants and the persons working with, and represented by the Complainants.
The addition of the term “top” to the disputed domain name is no coincidence. It is related to the modeling world and it generates an even greater confusion.
This Panel finds that the disputed domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <elite-top.com> be transferred to the Complainants.
Kiyoshi Tsuru
Sole Panelist
Dated: October 7, 2010.