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Generic Top Level Domain Name (gTLD) Decisions |
Hachette Filipacchi Presse v. Designz.biz
Claim Number: FA0204000110781
PARTIES
Complainant
is Hachette Filipacchi Presse,
Levallois Perret, FRANCE (“Complainant”).
Respondent is Designz.biz,
Nakatsu-city, Oita, JAPAN (“Respondent”) represented by Stephen H. Sturgeon, of Law
Offices of Stephen H. Sturgeon & Associates.
The
domain name at issue is <elle.biz>,
registered with Enom, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Hon.
Roger P. Kerans as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 23, 2002; the Forum
received a hard copy of the Complaint on
April 25, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 21,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
On
May 21, 2002, Respondent requested, without Complainant’s consent, an extension
of twenty days to file its Response.
Respondent’s request was granted on May 22, 2002, and the Response
deadline was extended to June 10, 2002.
A
timely Response was received and determined to be complete on June 10, 2002.
On July 6, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Roger P. Kerans as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
Complainant publisher has since 1979 published a fashion magazine called ELLE,
and during all this time it has had a circulation
of about 360,000. The magazine is “very popular in particular
in the respondent’s country, which is Japan, in France, and in many other
countries.”
The
Complainant has registered the word as a trademark in many countries, including
Japan, from 1989 in connection with clothing and
footwear as well as
periodicals and magazines. The
trademark has acquired an “incontestable reputation” throughout the world.
The
Respondent registered <elle.biz>
on March 27, 2002, but, as of the day of filing of the Complaint, had not set
up a website.
Use
of this name by the Respondent will lead to “obvious confusion” by the public,
and a fraudulent intention must be inferred.
B.
Respondent
In
an affidavit filed, Kan Okuda deposes that he is the sole owner of the
Respondent business. He further deposes that he is an architect
in Japan, a web designer, and a web consultant.
The
use of the generic French word for "she" is viewed as being chic,
fashionable and sophisticated by many women. Initially
Respondent offered email
addresses with the domain name of <ELLE.LA> -which combined the French
word for "she" with
the French feminine article.
The
Respondent denies that it has no previous business interest in the name. It says it has been using the word ELLE
since July of 2001 as an email address domain marketed to women. Accordingly,
since July of
2001 Respondent has been using the domain name <ELLE.LA> as
a combination of the French word ELLE meaning "she" combined
with the
French feminine article LA-to constitute a doubly chic and fashionable email
address. This is a much different
service than that offered by the Complainant.
The
Respondent registered the domain name ELLE.LA in January of 2001, and has been
actively and demonstrably preparing to provide
email addresses for the domain
name <elle.biz>.
There is no evidence that the Respondent
has registered the name in order to profit from any confusion.
Paragraph 15(a) of the STOP 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.”
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or
service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests
in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Notwithstanding
the heavy onus when one employs a generic term in a trademark , the Complainant has established a right to
the use of the name ELLE, which of
course is the French pronoun meaning “she” or “her”, in connection with its
successful fashion magazine and allied businesses.
I accept that, notwithstanding the rights
of the Complainant, one can legitimately employ the word “elle” in a business
name if it
does not offer any confusion with the use by the Complainant. A good-faith and legitimate use would add
words to the domain name to distinguish it from the established reputation of
business and
product of the Complainant.
I
accept that the Respondent has employed “elle-la” on a website since July,
2001, offering this as a combination of
“elle” combined with the French feminine article “la” to constitute a
“chic and fashionable” email address. I
note, however, the Respondent offers no evidence of actual customers for the
name.
This use may offer a legitimate – if
somewhat tenuous - interest in the use of the coined term “elle la”, but in my
view offers no
proof of a legitimate interest in the term “elle” standing
alone.
I accept that, as the Respondent
contends, the term “elle” connotes to many women the idea of something chic,
fashionable and sophisticated. I infer,
however, that the success of the fashion magazine published by the Complainant
has played a significant role in the formation
of that idea. It is not legitimate for the Respondent
knowingly to take advantage of that.
To employ <elle.biz> in an offer for email addresses is, for the
reasons mentioned, an obvious attempt to exploit the goodwill of the
Complainant and
to cause confusion in the minds of users that the service is
being offered by ELLE magazine. Notwithstanding his contrary protest,
I find
that this is exactly what the Respondent had in mind when he registered the
challenged name.
DECISION
The name <elle.biz> is hereby transferred to the
Complainant. No further challenges
shall be permitted under the STOP Policy.
Hon. Roger P. Kerans, Panelist
Dated: July 19, 2002.
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URL: http://www.worldlii.org/int/other/GENDND/2002/1202.html