Complainant is Hachette Filipacchi Presse of Levallois-Perret, France, represented by ipSO société selàrl, France.
Respondent is Xiaoqin Zhang of Jinhua, China.
The disputed domain name <elle.mobi> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2018. On September 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 30, 2018. 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.
Complainant is Hachette Filipacchi Presse, a French joint stock company, who publishes the French fashion magazine Elle. Elle Magazine is published around the world, including in China where Respondent is located. Complainant is the owner of numerous trademark registrations for the ELLE mark, including International Trademark No. 292472, registered on December 28, 1964, and Chinese Trademark Reg. No. 857854, registered on July 21, 1996. The ELLE trademark was first adopted by Complainant in November 1945 in France, and has expanded internationally in the early 1980’s to many countries, including China. Elle Magazine was first published locally in China in 1988.
Respondent registered the disputed domain name on November 30, 2016. Currently, the disputed domain name resolves to a mobile phone mockup website.
Complainant asserts that Respondent registered the disputed domain name but is not making any real or genuine use of it to promote or offer for sale any products or services. Complainant asserts that its Chinese counsel sent a cease and desist letter regarding all use of <elle.mobi> to Respondent. Complainant alleges Respondent replied to the cease and desist letter with an offer to sell the domain.
Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant asserts the ELLE trademark was first adopted in France in November 1945 and has since been registered around the world. Complainant argues that ELLE is well-known and/or a famous mark in China, where Respondent is domiciled. Complainant asserts that it maintains millions of followers on its ELLE Chinese social media accounts and over 425 ELLE domain names.
Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not making any bona fide use of the disputed domain name. Complainant further asserts that Respondent does not have a license or other permission to use the ELLE trademark. Complainant asserts that Respondent does not possess any trademark registration rights in China or elsewhere and was placed on actual notice of Complainant’s exclusive rights when Respondent received the cease and desist letter.
Complainant finally asserts that the disputed domain name was registered in bad faith and is being used in bad faith. Complainant argues that Respondent has at least seventeen other registered <.mobi> domain names, including <95580.mobi>, which corresponds to the customer service hotline for Postal Saving Bank of China. Complainant asserts this is a sign of bad faith.
Accordingly, Complainant has requested that the disputed domain name be cancelled.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to Complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on Complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that Complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that Complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the ELLE mark, which has been registered in France, China, and elsewhere internationally since at least as early as 1964, well before Respondent registered the disputed domain name. With Complainant’s rights in the ELLE mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc./Joseph Gross, WIPO Case No. D2010-0842.
In this instant proceeding, the disputed domain name is confusingly similar to Complainant’s well-known ELLE mark, because the disputed domain fully incorporates the entirety of the mark at the second level. It is well established that the addition of a Top Level Domain such as “.mobi” to the disputed domain name can be disregarded for the purposes of comparison, and therefore will not constitute as an element as to avoid identity or confusing similarity for the purposes of the Policy.
The Panel therefore finds Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights to the ELLE mark and in showing the disputed domain name is identical or confusingly similar to this mark.
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the Policy.
From the record in this case, there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. Furthermore, there is no evidence that Respondent is affiliated with, authorized, licensed to, or otherwise permitted to use the ELLE mark. Respondent has failed to submit any evidence demonstrating any rights or legitimate interests in the disputed domain name.
Finally, after examining the mobile mockup website under the disputed domain name, the Panel concludes that it does not have contain actual information or utility. Rather, it is most akin to an “under construction” or parking website. Therefore, this type of use does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See Philip Morris USA v. Prophet Partners Inc., WIPO Case No. D2007-1614 (stating when a respondent chooses a domain name to capitalize on a complainant’s famous trademark, it cannot be considered a bona fide offering of goods and services); see also Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968 (finding a site that is “under construction” does not constitute noncommercial fair use). Respondent failed to submit any evidence demonstrating a right or legitimate interest, and therefore Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 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 online location, by creating a likelihood of confusion with 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.”
In the instant proceeding, the disputed domain name is identical to the ELLE trademark, which numerous prior panels have held is a well-known trademark. See Hachette Filipacchi Presse v. Domains by Proxy, LLC / Al-Rahim International WIPO Case No. D2014-1635 (“Complainant’s mark is well known…”); Hachette Filipacchi Presse v. Peter B. King, WIPO Case No. D2010-2089 (“The Panel has no doubt that ELLE is well-known for the purposes of the proceedings and the same view is shared by prior panels”) citing 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.
In reply to Complainant’s cease and desist letter, Respondent offered to sell the disputed domain name for a price set by Respondent. Counsel for Complainant in China observed that, “After sending out a reminder, the infringer replied to us, but pretended that he could not understand the warning letter with an excuse that we sent out [the] wrong email to him.” Moreover, the same counsel observed that, “After several rounds [of] communication, [Respondent] expressed that he wish [sic] to sell the domain, but would like us to give an offer first.” The Panel finds that the totality of the circumstances and the absence of any participation in these proceedings by Respondent militate toward a determination that the disputed domain name was registered and used in bad faith. More specifically, the disputed domain name wholly incorporates the well-known ELLE trademark, which Complainant has specifically demonstrated is well known in China. Thus, Respondent must have known or been aware of Complainant’s rights in the mark. Moreover, there is no evidence to show that Respondent had any credible evidence-backed rationale for registration of the disputed domain name or any independent right to or legitimate interest use of the disputed domain name based on the mobile mockup website at issue. These factors coupled with an unspecified offer for sale are indicative of bad faith pursuant to 4(b)(i) of the Policy. WIPO Overview 3.0, section 3.1.1.
Accordingly, the Panel finds that Complainant succeeds under 4(b)(i) of the Policy.
For 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 <elle.mobi> be cancelled.
Brian J. Winterfeldt
Date: November 19, 2018
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