Hachette Filipacchi Presse v. Designz.biz
Claim Number: FA0204000110781
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.
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.
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.
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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