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Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd. [2005] GENDND 1585 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd.

Case No. D2005-0587

1. The Parties

The Complainant is Hachette Filipacchi Presse, Levallois Perret, France, represented by Markplus International, France.

The Respondent is Vanilla Limited/Vanilla Inc/Domain Finance Ltd., Singapore, United Arab Emirates, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Names and Registrar

The disputed domain names:

1. <africanpremiere.com>	2. <americanfilmpremiere.com>
3. <americapremiere.com>	4. <arabpremiere.com>
5. <aseanpremiere.com>	6. <asiafilmpremiere.com>
7. <asiamoviepremiere.com>	8. <asianfilmpremiere.com>
9. <asianmoviepremiere.com>	10 <baseballpremiere.com>
11. <boxingpremiere.com>	12. <chinafilmpremiere.com>
13. <chinamoviepremiere.com>	14. <chinapremiere.com>
15. <chinesepremiere.com>	16. <elleafrica.com>
17. <elleafrican.com>	18. <elleamerica.com>
19. <elleamerican.com>	20. <elleasean.com>
21. <elleasian.com>	22. <elleaussie.com>
23. <elleaustralia.com>	24. <ellebangkok.com>
25. <elleberlin.com>	26. <ellebild.com>
27. <elleblack.com>	28. <ellebombay.com>
29. <elleborsa.com>	30. <elleboston.com>
31. <ellebrasil.com>	32. <ellebusiness.com>
33 <ellecalifornia.com>	34. <ellecasino.com>
35. <ellechicago.com>	36. <ellechine.com>
37. <ellecomedie.com>	38. <ellecomedy.com>
39. <elledaily.com>	40. <elledallas.com>
41. <elledemo.com>	42. <elledetroit.com>
43. <elledigital.com>	44. <elledigitale.com>
45. <elledubai.com>	46. <elleenergy.com>
47. <elleeurop.com>	48. <elleeurope.com>
49. <ellefm.com>	50. <ellefootball.com>
51. <elleforum.com>	52. <ellefoto.com>
53. <ellefrance.com>	54. <ellefreco.com>
55. <ellegarcon.com>	56. <ellegeisha.com>
57. <ellegreco.com>	58. <ellehaven.com>
59. <elleheaven.com>	60. <ellehello.com>
61. <ellehip.com>	62. <ellehiphop.com>
63. <ellehispanic.com>	64. <ellehollywood.com>
65. <ellehomme.com>	66. <ellehongkong.com>
67. <ellehop.com>	68. <ellehouston.com>
69. <elleiberia.com>	70. <elleindian.com>
71. <elleitalia.com>	72. <ellejapan.com>
73. <ellejob.com>	74. <ellejobs.com>
75. <ellekarachi.com>	76. <ellelatino.com>
77. <ellelebanon.com>	78. <elleliberation.com>
79. <elleliquid.com>	80. <ellelive.com>
81. <ellelondon.com>	82. <ellelove.com>
83. <ellemanila.com>	84. <ellemexico.com>
85. <ellemilan.com>	86. <ellemilano.com>
87. <ellemonde.com>	88. <ellemontreal.com>
89. <ellemovie.com>	90. <ellemusica.com>
91. <ellemusique.com>	92. <ellenaturels.com>
93. <ellenewyork.com>	94. <ellenoir.com>
95. <ellenyc.com>	96. <elleny.com>
97. <ellepk.com>	98. <ellepop.com>
99. <ellepremier.com>	100. <ellepremiere.com>
101. <ellerap.com>	102. <ellerepubblica.com>
103. <ellerepublic.com>	104. <ellerepublique.com>
105. <ellereview.com>	106. <ellerock.com>
107. <elleseattle.com>	108. <elleshanghai.com>
109. <ellesiam.com>	110. <ellesoccer.com>
111. <ellesociete.com>	112. <ellesociety.com>
113. <ellespirit.com>	114. <ellestar.com>
115. <elletaiwan.com>	116. <elletexas.com>
117. <ellethailand.com>	118. <elletimes.com>
119. <elletokyo.com>	120. <elletotale.com>
121. <elletravel.com>	122. <elleuk.com>
123. <ellevanity.com>	124. <ellevideo.com>
125. <ellework.com>	126. <euromoviepremiere.com>
127. <europeanfilmpremiere.com>	128. <europefilmpremiere.com>
129. <europemoviepremiere.com>	130. <femalepremiere.com>
131. <femininelle.com>	132. <footballpremiere.com>
133. <f1premiere.com>	134. <goldpremiere.com>
135. <hellopremiere.com>	136. <indiafilmpremiere.com>
137. <indianpremiere.com>	138. <indiapremiere.com>
139. <italiafilmpremiere.com>	140. <italiamoviepremiere.com>
141. <italianpremiere.com>	142. <japanpremiere.com>
143. <kidspremiere.com>	144. <madridmatch.com>
145. <mortgagepremiere.com>	146. <motorracingpremiere.com>
147. <motorsportpremiere.com>	148. <naturelle.com>
149. <newyorkpremiere.com>	150. <nwyorkpremiere.com>
151. <nypremiere.com>	152. <premiereasia.com>
153. <premiereaustralia.com>	154. <premierechina.com>
155. <premiereedition.com>	156. <premiereitalia.com>
157. <premieremotorsport.com>	158. <premierewifi.com>
159. <premierewrestling.com>	160. <premierewwf.com>
161. <premiermovie.com>	162. <racingpremiere.com>
163. <romematch.com>	164. <soccerpremiere.com>
165. <sportspremiere.com>	166. <telejours.com>
167. <ukmoviepremiere.com>	168. <usafilmpremiere.com>
169. <usamoviepremiere.com>	170. <usapremiere.com>
171. <worldpremieremovie.com>	172. <3gpremiere.com

are registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2005. On June 8, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain names at issue. From June 9, 2005, until June 17, 2005, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 17, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2005. The Response was filed with the Center on July 26, 2005.

The Center appointed Peter G. Nitter, Isabelle Leroux and David E. Sorkin as panelists in this matter on August 30, 2005. The Panel finds that it was properly constituted. Each member of 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.

Upon the Presiding Panelist’s request, the Center extended the term for the final decision.

4. Factual Background

Complainant is a French Company, publishing several magazines, of which at least some are known worldwide.

The Complainant has registered numerous trademarks consisting of the French word ELLE all over the word. The first mark has priority from January 21, 1966.

Complainant also has registered several marks consisting of the word PREMIERE across the world. The first mark has priority from September 3, 1982.

Complainant has several trademark registrations for the marks MATCH and PARIS MATCH internationally. The first mark has priority from March 25, 1949.

Complainant also has international and French registrations for the mark TELE 7 JOURS. The first of these marks has priority from July 21, 1980.

All the above mentioned marks are connected to Complainant’s magazines.

Respondent operates World News Network on the Internet, a news resource on the Internet with 4,500 connected websites.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Respondent has registered domain names that are all identical or confusingly similar to Complainant’s marks. Respondent has no rights or legitimate interests in the domain names, as they are used to divert Internet users to Respondent news site where the marks are used not as generic words necessary to refer to Respondent’s goods or services. Respondent is not known by the contested domain names.

The Complainant contends that domain names are registered and used in bad faith, as they are used to divert Internet users to a commercial online news magazine, which has a small number of different versions but which all have the same graphic presentation and content, which is shown in an order which depends on the domain name typed. Respondent is thus unduly taking advantage of the fame of the marks and the corresponding investments made by the Complainant. Respondent is a cybersquatter. Respondent’s domain names mislead the users to believe that Respondent’s site is an official site of Complainant or at least that they are linked, especially since Respondent’s website also contains links to official websites of the Complainant. Respondent’s use of the domain names prevents Complainant’s use of its own marks.

Complainant requests that all of the domain names be cancelled in accordance with Paragraph 4(i) of the Policy.

B. Respondent

Pursuant to the Response, Complainant has included in the Complaint certain domain names for which there is no plausible claim under the Policy, such as <naturelle.com> and the domain names incorporating “premiere”. The Panel must consider each domain name separately under the Policy, and may issue a split decision. Complainant’s claims constitutes Reverse Domain Name Hijacking. Respondent is not a cybersquatter.

The Respondent contents that word “elle” is a common French word. Several third-party trademarks contain the word “elle”. With regard to the domain name <naturelle.com>, the fact that the letter combination “elle” appears in the otherwise common French word “naturelle”, does not give Complainant the right to have this domain name cancelled.

The Respondent further claims that the words “premiere” “and “premier” are common words. Complainant has no right to the series of domain names incorporating the common word “premiere”, which constitute common descriptive terms such as <premiermovie.com>. The PREMIERE mark is extremely weak as it is descriptive. Terms like “premiere”, “movie premiere” etc. are subject to substantial third-party use.

According to Response, Respondent’s World News Network is one of the largest news resources on the Internet. Respondent has registered the disputed domain names in order to use them for bona fide websites in this news network. The domain names each incorporate nothing more than common words in combination with various generic and geographic words. This practice is consistent with Respondent’s pattern of registering other geographic and descriptive domain names for its news websites, and establishes Respondent’s legitimate interest. There is no evidence of registration or use in bad faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

The test whether the domain names are identical or confusingly similar to the marks under the Policy is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion, see for example, Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420.

Respondent’s domain names all but one, <naturelle.com>, consist of one or more of Complainant’s marks, either with the addition of a geographical term or another generic word, term or well known abbreviation and some with a single letter or number deducted from the marks. Complainant’s marks ELLE and PREMIERE are indeed originally generic words, but the Panel finds that these marks have gained worldwide fame as asserted by Complainant. The marks TELE 7 JOURS and PARIS MATCH are not originally such generic terms, but distinctive combinations of common words.

Complainant has provided evidence that Complainant’s marks are all well known.

The majority of the Panel finds that the additions and deductions of generic words to the different marks, do not alter the fact that the domain names are confusingly similar to the marks. This view is in accordance with several previous Panel decisions, see for example PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696.

For the domain names which consists of the marks with letters/numbers deducted, such as <telejours.com>, this is a minor change from the mark TELE 7 JOURS, which the public might not even notice. This has been held in several cases under the Policy, and the Panel makes reference to the case Louis Vuitton v. Net-Promotion, WIPO Case No. D2000-0430. The two domain names <romematch.com> and <madridmatch.com> contain the mark MATCH and is also confusingly similar to the mark PARIS MATCH, as Respondent has simply substituted a capital city with others. This is especially so as the marks are well known and consist of an unusual and unexpected combination of words.

The exception is the domain name <naturelle.com>. This domain name does not appear as a combination of the very famous mark ELLE with the addition of the generic term “natur”, but rather as the separate and self-contained word “naturelle”. Thus, there is no confusing similarity between the domain name and this mark .

The majority of the Panel finds that all the domain names, except the mentioned <naturelle.com>, are confusingly similar to Complainant’s trademarks in accordance with Para. 4(a)(i) of the Policy. The Complaint has failed as to the domain name <naturelle.com>. Consequently, that domain name will not be discussed in relation to the remaining two elements bellow.

B. Rights or Legitimate Interests

Respondent has asserted that he has legitimate interest in the domain names, as they all consist of generic words combined and Respondent is using them to provide serious content from various news sources.

The Panel will not question the site of the Respondent being a news provider on the Internet. The Panel has itself visited the site. However, the fact that Respondent runs a legitimate activity does not necessarily mean he has legitimate interests in using the specific domain names at issue.

The Panel makes reference to a previous case against Respondent under the Policy, in which Respondent had registered various domain names containing the mark VOGUE, a famous mark used by the owner for a fashion magazine, Advance Magazine Publishers Inc. v. Vanilla Ltd., WIPO Case No. D2004-1068. The Panel in that case stated:

“[A] legitimate interest cannot be established where the evidence suggest that registration was for the purpose of benefiting from the Complainant’s trademark, even where that trademark can also be used as a common term. In the Panel’s view, the Respondent has failed to rebut the Complainant’s assertion that it registered the Disputed Domain Names for the purpose of taking advantage of the Complainant’s established rights in the VOGUE mark. In the Panel’s opinion the explanation that the Disputed Domain Names were intended to use ‘vogue’ in a descriptive sense for websites featuring latest trends in various geographic areas referred to in the domain names, quite simply, lacks credibility.”

The Panel in the present case finds this consideration equally suitable for this case, and thus finds that the Respondent has not established a legitimate interest in using the domain names in dispute in accordance with Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant asserts that the domain names are registered and used by Respondent in order to attract Internet users to Respondent’s site, by exploiting Complainant’s marks and the goodwill attached to them, and that this fulfills the requirement under Paragraph 4(a)(iii) of the Policy.

Respondent claims that he had or has no intention of exploiting Complainant’s marks, but simply has registered numerous generic words as domain names.

The Panel finds that Respondent’s submission on this point lacks credibility. The fact that it is the Complainant’s trademarks that reoccur in the various domain names, and not other generic words that are not trademarks, convinces the Panel that this cannot be a coincidence.

The fact that some of Respondent’s websites connected to some of the “elle” domain names contain links to Complainant’s homepage <elle.com>, shows that Respondent is aware of Complainant’s “elle” site and ELLE mark. This supports the Panels view that Respondent has registered the “elle” domain names with full knowledge of the Complainant and ELLE mark, and in order to benefit from the mark’s fame. It is also to be noted an aspect that the word “elle” is French, with no meaning in English.

The marks TELE7JOURS and PARIS MATCH are not generic as such. The Panel finds it highly unlikely that Respondent has registered the relevant domain names as generic words, without considering them to be confusingly similar to the marks of Complainant, and thus without an intention of attracting Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s marks, the Policy Paragraph 4(b)(iv).

With regard to the various domain names containing the words “premiere” and “premier”, the Panel finds that it is relevant that there is a clear pattern in Respondent’s conduct. Respondent has registered numerous domain names containing the names of famous and well known magazines and corresponding trademarks, with various additions, deductions and replacement of words and letters/numbers to the marks. Respondent has also, in a previous case under the Policy, Advance Magazine Publishers Inc. v. Vanilla Ltd., WIPO Case No. D2004-1068, been found to have registered numerous variations of a famous magazine name and formal trademark VOGUE.

Such a clear pattern in Respondent’s conduct strongly indicates that Respondent has been aware of Complainant’s various marks.

The type of conduct that Respondent has displayed in this case, by registering 172 domain names including Complainant’s trademarks, is another strong indication that Respondent has been aware of Complainant’s various marks. It is the opinion of the majority of this Panel that one should see all registrations in a contextual view. This implies that a registrant who has registered series of domain names which all contain Complainant’s trademark[s] with different prefixes, suffixes etc. of generic nature, has a more difficult case to answer to than a registrant who only holds one or few domain name registrations of such nature.

The Panel concludes that nearly all the domain names fall within the same pattern, and that Respondent has registered and used these domain names to attract user to his site for commercial gain by creating a likelihood of confusion with Complainant’s marks, the only exception being the domain name <naturelle.com>.

This is also supported by the fact that most of the domain names in dispute were registered within roughly the same period of time, with the exception of <naturelle.com>, which was registered several years before the other domain names.

The majority of the Panel finds that Respondent has registered and used all domain names but <naturelle.com> in bad faith, according to Paragraph 4(a)(iii) of the Policy.

7. Decision

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 names listed in this decision’s Section 2 be cancelled, with the exception of the domain name No. 148 in Section 2, namely the domain name <naturelle.com>.

Peter G. Nitter Presiding Panelist
Isabelle Leroux Panelist	David E. Sorkin Panelist

Dated: September 30, 2005