Generic Top Level Domain Name (gTLD) Decisions

Complainant is Hachette Filipacchi Presse, FRANCE ("Complainant") represented by Franck CASO. Respondent is Fortune Int'l Development, Taipei, Taiwan ("Respondent").

The domain name at issue is "elle2000.com" registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 19, 2001; the Forum received a hard copy of the Complaint on March 2, 2001.

On February 20, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "elle2000.com" is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@elle2000.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 4, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

Respondent has not filed any response to the allegations raised in the Complaint.

Complainant is the owner in France, Europe, USA, and all over the world, of a large number of Trademarks Registrations/Applications for the ELLE mark. A few examples are listed below:

Complainant uses these marks in connection with its well-known woman’s magazine, ELLE, which deals with fashion, beauty and shopping. This magazine has been published in France since 1945 and is also published in the following countries: Argentina, Australia, Brazil, Chile, China, Colombia, Czech Republic, Germany, Greece, Holland, Hong Kong, India, Italy, Japan, Korea, Mexico, Norway, Poland, Portugal, Quebec, Romania, Russia, Singapore, South Africa, Spain, Sweden, Taiwan, Thailand, Turkey, USA, UK. These marks are also used to designate other products sold in association with the magazine ELLE.

Respondent registered the domain name in question on December 8, 1998. Since registration, Respondent has not begun to use its domain name "elle2000.com" in commerce.

Moreover, it appears that Respondent has registered more than 50 domain names corresponding to well-known trademarks, which incorporate the number 2000 or 2001. The following are some examples of domain names registered by Respondent:

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Given its numerous trademark registrations, Complainant has rights in the ELLE mark. Since ELLE is the most distinctive and attractive term of "elle2000.com," there exists an obvious likelihood of confusion for the public. See Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested domain name "omnitel2000.com" is confusingly similar to the OMNITEL trademark).

Thus, the Panel finds that the domain name is confusingly similar to a trademark in which Complainant has rights, as required by Policy ¶ 4(a)(i).

Respondent has yet to provide any basis that would legitimize any claim it has to the contested domain name.

The Panel finds, based on the record before it, that Respondent has merely passively held the contested domain name. Respondent’s website is not operational and the Panel infers that it never has been. Such passive use does not constitute a legitimate commercial or non-commercial use under paragraph 4(c) of the Policy. Policy ¶¶ 4(c)(i), (iii). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

In addition, there is no evidence that Respondent has established any business or non-profit organization in connection with the term. There is no evidence that Respondent has any relationship or association whatsoever with Complainant. Thus, based on the record, the Panel concludes that Respondent is not commonly known by the ELLE2000 mark. Policy ¶ 4(c)(ii).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.

For the purposes of paragraph 4(a)(iii), several circumstances, 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. In this situation, Policy ¶ 4(b)(ii) applies:

(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.

Respondent has registered many domain names that incorporate trademarks or service marks owned by others; this conduct establishes the requirements of paragraph 4(b)(ii). See Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith). The Panel concludes that "elle2000.com" has been registered and used by Respondent in bad faith in order to prevent Complainant from reflecting its mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct. Policy ¶ 4(b)(ii).

It should be noted that the circumstances of bad faith are not limited to the above.

Many UDRP Panels have held that, under appropriate circumstances, passive holding evidences bad faith use of a domain name. Such circumstances, when viewed in their totality, exist here in this case. Since Respondent registered the domain name in 1998, it has made no use of the website connected to the domain name. Complainant listed many such "passive holding" cases in its complaint. See, e.g., JVC Americas Corp. v. Damian Macafee CPR007 (CPR Nov. 10, 2000); Pacific Investment Management Co. LLC v. Alex Szabo FA 95614 (Nat. Arb. Forum Oct. 18, 2000); National Australia Bank Ltd. v. Quality Systems Consulting D2000-0765 (WIPO Aug. 31, 2000); Gonvarri Industrial, S.A. v. Gon Varr I An Sexo a Domicilio D2000-0637 (WIPO Aug. 28, 2000); Garage Records. Inc. v. Garage Records FA 95071 (Nat. Arb. Forum Aug. 17, 2000); Dollar Financial Group, Inc. v. RXW Management FA 95108 (Nat. Arb. Forum Aug. 4, 2000); Lusomundo - Sociedade Gestora de Parcipacoes Sociais, S.A. v. Inmo Soria and Andres Ceballos Moscoso D2000-0523 (WIPO Aug. 2, 2000); Valigene Corp. v. MIC FA 94860 (Nat. Arb. Forum Aug. 1, 2000); Vertical Solutions Management, Inc. v. webnet-marketing, inc. FA 95095 (Nat. Arb. Forum July 31, 2000); Hewlett-Packard Co. v. High Performance Networks, Inc. FA 95083 (Nat. Arb. Forum July 31, 2000); CBS Broadcasting, Inc. v. Toeppen D2000-0400 (WIPO July 6, 2000); August Storck KG v. Tony Mohamed D2000-0196 (WIPO May 3, 2000); Recordati S.P.A. v. Domain Name Clearing Co. D2000-0194 (WIPO July 21, 2000); Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau D2000-0172 (WIPO Apr. 20, 2000); Telstra Corp. Ltd. v. Nuclear Marshmallows D2000-0003 (WIPO Feb.18, 2000).

The Panel finds these "passive holding" cases to be directly on point with the facts of this case. The "passive holding" test has been well established in the UDRP and as such, this Panel concludes that given the domain name’s inactivity for the past 2 years, Respondent is using the domain name in bad faith.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name has been registered and is being used by the Respondent in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "elle2000.com" be transferred from the Respondent to the Complainant.