The Complainant is Hachette Filipacchi Presse of Levallois-Perret, France, represented by Markplus International, France.
The Respondent is Peter B. King of Suzhou, Jiangsu, the People’s Republic of China.
The disputed domain name <ellemommy.com> (the “Disputed Domain Name”) is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 3, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On December 6, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 6, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 December 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 13, 2011. 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 publishes magazines, which include an international woman’s fashion magazine under the name Elle. The Elle magazine was first published in 1945 and first appeared in China in 1988. It has 38 different editions that serve the needs of 20 million readers worldwide.
The Complainant owns registrations for the trade mark ELLE in many countries in the world including the following:
Jurisdiction Trade Mark No Application Date
International Registration 657541 May 5, 1995
International Registration 307983 January 21, 1966
CTM 3475365 October 30, 2003
P.R. China 857854 September 8, 1994
Hong Kong, SAR of P.R. China 199501741 July 17, 1985
The Complainant is also the registrant of various domain names including <elle.com>, <elle.fr>, <elle.com.tw>, and <ellegirl.com>. The trade mark ELLE has been the subject of various domain name disputes (i.e., Hachette Filipacchi Presse v Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587; Hachette Filipacchi Presse v Shi Cheng, WIPO Case No. D2005-1240; Hachette Filipacchi Presse v Xubing, WIPO Case No. D2005-1248).
The Disputed Domain Name was registered on March 20, 2006. Little is known about the Respondent beyond what is disclosed in the Complaint and the website resolved from the Disputed Domain Name. It is noted that the Disputed Domain Name redirects to a website at “www.ellemommy.com.cn”. The redirected website refers to a certificate holding out Suzhou NPFPC Elle Eugenic Productions Co, Ltd as an authorized distributor of France Elle Brand Administer (HK) Group Limited. However, France Elle Brand Administer (HK) Group Limited was apparently enjoined by the High Court of the Hong Kong Special Administrative Region on June 22, 2006 from infringing the trade mark ELLE, required to remove ELLE from its domain name, and ordered to remove ELLE from its name.
The Complainant contends that:
1) The Disputed Domain Name is identical or confusingly similar to the trade mark ELLE in which it has rights. The Disputed Domain Name incorporates the trade mark ELLE in its entirety and the word “mommy” in the Disputed Domain Name does not distinguish the Disputed Domain Name from the trade mark ELLE;
2) The Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not own the trade mark ELLE and uses it without the Complainant’s agreement. The Respondent does not have any link with the trade mark ELLE and the group Hachette to which the Complainant belongs; and
3) The Disputed Domain Name was registered and is being used in bad faith. The trade mark ELLE is well-known all over the world. The website redirected from the Disputed Domain Name intentionally seeks to lead the public to think that that website is officially sanctioned by the Complainant. The website tarnishes the trade mark ELLE.
The Respondent did not reply to the Complainant’s contentions.
The default language of the proceeding is Chinese because the language of the registration agreement of the Disputed Domain Name is Chinese. However, taking into account the following circumstances and exercising the prerogatives given pursuant to paragraph 11 of the Policy, the Panel determines that English should be the language of the proceeding:
1) The Complaint was submitted in English and the Complainant requested that the language of the proceeding be English;
2) The Respondent has an English name “Peter B. King” which suggests strongly that the Respondent is conversant with English;
3) The Respondent has chosen not to participate in the proceedings and not to contest the language request of the Complainant;
4) The Complainant has indicated great difficulty in obtaining a Chinese translation of the Complainant and forcing the Complainant to do so would serve no discernible purpose; and
5) Not only would insisting on Chinese as the language of the proceeding serve no beneficial purpose, it will also very likely cause unnecessary delay to the proceeding.
To succeed in the proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant clearly has trade mark rights in the trade mark ELLE. A number of the trade mark registrations for ELLE pre-date the registration of the Disputed Domain Name by decades.
The trade mark ELLE is incorporated in its entirety in the Disputed Domain Name. The only difference between the Disputed Domain Name and the trade mark ELLE is the suffix “mommy”. The Panel agrees with the Complainant that “mommy” is a generic word which does not assist to distinguish the Disputed Domain Name from the trade mark ELLE.
Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the trade mark ELLE and the first limb of paragraph 4(a) of the Policy is established.
The Complainant has denied any link with the Respondent. The redirection of the Disputed Domain Name to the website at “www.ellemommy.com.cn” shows that the Respondent is associated with the website and the company Suzhou NPFPC Elle Eugenic Productions Co, Ltd. The party who purportedly authorized the Respondent and/or Suzhou NPFPC Elle Eugenic Productions Co, Ltd to use the trade mark ELLE, namely, France Elle Brand Administer (HK) Group Limited, has been held to infringe the trade mark ELLE by the High Court of the Hong Kong Special Administrative Region. The Respondent has declined to provide any explanation or demonstrate any circumstances which may suggest that rights or legitimate interests nevertheless exist.
In the circumstances, in accordance with established principles, the Panel is convinced that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and the second limb of paragraph 4(a) of the Policy is also established.
The Panel has no doubt that ELLE is a well-known mark for the purposes of the proceedings and the same view is shared by prior panels (i.e., Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., supra; Hachette Filipacchi Presse v. Shi Cheng, supra; Hachette Filipacchi Presse v. Xubing, supra). The Panel also does not doubt that the Respondent is familiar with the Complainant’s trade mark rights in ELLE.
Paragraph 4(b)(iv) of the Policy highlights an example of bad faith registration and use:
“… 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 use of the Disputed Domain Name is an intentional attempt at association with the Complainant. The offering of goods for sale on the website clearly points to an objective of commercial gain. Past panels have identified such activity as opportunistic bad faith (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746) which is likely to mislead a reasonable person visiting the website as to its source, sponsorship, affiliation, or endorsement of the website and the products offered on the website. This is aggravated by the website holding out the authorization of France Elle Brand Administer (HK) Group Limited.
Although the Complainant did not indicate when the court action which led to the order of the High Court of the Hong Kong Special Administrative Region on June 22, 2006 was initiated, it is likely to have been filed before the Disputed Domain Name was registered on March 20, 2006. Since the Respondent is associated with the redirected website at “www.ellemommy.com.cn” and France Elle Brand Administer (HK) Group Limited, the Respondent is likely to have been aware of the court action at that time. Since France Elle Brand Administer (HK) Group Limited has already been held to be an infringer of the trade mark ELLE, the continued distribution of products under the trade mark ELLE originating from France Elle Brand Administer (HK) Group Limited by Suzhou NPFPC Elle Eugenic Productions Co, Ltd, and accordingly the Respondent’s association with Suzhou NPFPC Elle Eugenic Productions Co, Ltd, is clearly tainted.
Any continued use of the trade mark ELLE by France Elle Brand Administer (HK) Group Limited would potentially contravene the order of court and cannot by any sense be in good faith. In the absence of any cogent explanation, it is inconceivable how any similar use by Suzhou NPFPC Elle Eugenic Productions Co, Ltd and/or the Respondent which claims their authorization as stemming from France Elle Brand Administer (HK) Group Limited would be other than bad faith in the circumstances.
In view of the above, the Panel is satisfied that bad faith registration and use under the third limb of paragraph 4(a) of the Policy is established.
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 <ellemommy.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: January 27, 2011