Complainant is Miss Universe L.P., LLLP of New York, New York, United States of America, represented by Kelley Drye & Warren, LLP, United States of America.
Respondent is Domainsrin of United States of America.
The disputed domain name <missusasex.com> (the “Domain Name”) is registered with Internet Service Registrar, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On September 30, 2010, the Center transmitted by email to Internet Service Registrar, Inc. a request for registrar verification in connection with the Domain Name. On October 3 and 14, 2010, Internet Service Registrar, Inc. transmitted by email to the Center its verification response confirming that Respondent is the current registrant of the Domain Name.
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”).
On October 3, 2010 Respondent sent an email communication to the Center regarding the proceedings. The Center acknowledged receipt of Respondent’s email communication on October 7, 2010 and informed Respondent of the next procedural steps in these proceedings.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on November 5, 2010.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 1, 2010. 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 the owner of the United States service mark for MISS USA, Registration No. 1,601,484 registered on June 12, 1990 (the “MISS USA mark”). Complainant and its predecessors-in-interest have used the MISS USA mark in the United States in connection with the promotion and production of an annual beauty pageant for over 50 years.
Additionally, Complainant has an active presence on the Internet via the operation of more than ten websites that include the MISS USA mark in the domain name including <missusa.com>.
The Domain Name was registered on May 31, 2009 and expires on May 31, 2011.
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant has extensive, exclusive rights in the well-known and incontestable trademark MISS USA.
The Domain Name is confusingly similar to the MISS USA mark as it incorporates the entirety of Complainant’s MISS USA mark and only adds the generic terms “sex” and “.com” Such additions are not sufficient to avoid a finding of confusingly similarity.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent has no rights or legitimate interests in the Domain Name. The Domain Name is not the trade name or company name of Respondent. Respondent is not commonly known by that name, and the name does not bear any legitimate relationship to the business of Respondent. Respondent is similarly not a licensee of Complainant and is not otherwise authorized to use Complainant’s MISS USA mark.
By registering a domain name that incorporates the entirety of Complainant’s famous MISS USA mark, Respondent’s sole intention was to benefit financially from the renown associated with Complainant’s trademark by misleadingly diverting consumers and tarnishing Complainant’s trademark. The website associated with the Domain Name confirms such intention as it was offered for sale initially and is now a pornographic web site offering pornographic material on a subscription basis.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
The MISS USA mark is so widely recognized in the United States and throughout the world, Respondent must have been aware of Complainant’s rights in the MISS USA mark when registering the Domain Name. Knowledge can also be inferred based upon the fame and long-standing use of Complainant’s MISS USA mark.
By including the entirety of Complainant’s famous mark in the Domain Name and registering it with the intention of selling it at a profit and to promote its pornographic services and content, Respondent clearly intended to attract Internet users by capitalizing on the goodwill of Complainant’s famous mark for its own commercial gain.
Respondent’s bad faith is also evidenced by its failure to respond to Complainant’s repeated communications concerning the alleged trademark infringement. Bad faith is also evidenced by Respondent’s deliberate attempt to conceal its true identity. Respondent provided incomplete WhoIs information to the concerned Registrar when registering the Domain Name and, therefore, Complainant’s correspondence could not be delivered to the mailing address provided. After presumably receiving Complainant’s initial correspondence via email, Respondent changed the owner information and identified itself as “Domainsrin” using a different, but still incomplete address. The email address however remained the same. Deliberate actions such as these, i.e. providing false contact information and changing contact details in an attempt to thwart domain name dispute proceedings, constitutes bad faith.
Respondent did not formally respond to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. (Policy, paragraph 4(a)).
Because Respondent is in default, the Panel may draw appropriate inferences from Respondent’s default. (Rules, paragraph 14(b)). However, the Rules also require that Complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding. (Rules, paragraph 3).
Complainant and its predecessors-in-interest have used the MISS USA service mark in connection with its beauty pageants for over 50 years. Complainant is also the owner of United States Registration No. 1,601,484 for the MISS USA service mark as noted above. Given Complainant’s long and extensive use of the MISS USA service mark and its ownership of the aforementioned registration for the MISS USA mark, the Panel finds that Complainant has trademark rights in the MISS USA mark.
The Panel also finds that the Domain Name is nearly identical to Complainant’s MISS USA mark because it incorporates Complainant’s entire trademark and differs from Complainant’s registered MISS USA mark only in that it adds the common term “sex”. It is well-settled that the mere addition of a generic or descriptive term is not sufficient to avoid confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (the fact that the word “autoparts” is added to the Complainant’s trademark does not eliminate the identity, or at least the similarity, between the Complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.) See also, Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (addition of generic words “healthcare” to form <bayerhealthcare.com> domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (addition of the “ordinary descriptive” term “buy” to mark LANTUS in domain <buylantus.com> “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); 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 (finding domains such as <pepsibasketball.com>, <pepsigames.com>, <pepsihockey.com>, and <pepsisoccer.com> confusingly similar to plaintiff’s PEPSI mark; stating that “[t]he mere addition of common terms such as ‘sports,’, ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”).
Therefore, this Panel finds that the Domain Name is identical or confusingly similar to the trademark in which Complainant has rights, in violation of the Policy, paragraph 4(a)(i).
With respect to 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the Domain Name. Nor is Respondent a licensee authorized to use Complainant’s MISS USA mark.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Given the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Because Complainant’s MISS USA mark is so widely recognized in the United States and throughout the world, this Panel is inclined to believe Respondent must have been aware of Complainant’s rights in the MISS USA mark when the Domain Name was registered on May 31, 2009, more than fifty years after the first use of the MISS USA mark. There is substantial authority that registration of a domain name that is confusingly similar to a mark by a party that lacks rights, legitimate interests or a relationship with the trademark owner can constitute evidence of bad faith registration. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith); see also AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440 citing Sporty’s Farm, LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000) (registration of a domain name that is confusingly similar to a famous trademark by any entity which has no relationship to that mark is evidence of bad faith registration and use.).
Moreover, Respondent’s bad faith registration is also evidenced by: (a) its failure to respond to Complainant’s repeated communications concerning the alleged trademark infringement; and (b) Respondent’s deliberate attempt to conceal its true identity. Respondent provided incomplete contact details to the Registrar for the WhoIs information. Complainant’s hard copy correspondence mailed to the listed address was returned marked as “undeliverable.” Also, after apparent receipt of Complainant’s electronic copy of the correspondence, Respondent changed the registrant information by identifying itself as “Domainsrin” and changed the address details to a different yet still incomplete address. These actions have consistently been held to constitute further evidence of bad faith under the Policy. Providing false or incomplete contact information in an attempt to thwart domain name dispute proceedings constitutes bad faith. See Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410; (providing erroneous and incomplete contact information constitutes bad faith); and FMV Opinions, Inc. v. the Fair Market Valuation experts, WIPO Case No. D2002-0372.
Therefore, the Panel finds that the Domain Name was registered in bad faith.
The Panel also finds that the Domain Name is used in bad faith. The Panel finds that Respondent uses Complainant’s famous mark to draw attention to its sexually explicit website. Respondent exploits the association of the MISS USA mark with beautiful women for the purpose of attracting Internet users for its own commercial gain. See PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (use of domain names to capture goodwill of PEPSI mark and profit from goodwill was found to be in bad faith).
The Panel therefore finds that Complainant has proved Respondent’s bad faith in registering and using the Disputed Domain Name under paragraph 4(b)(ii) and (iv) of the Uniform Policy.
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 name <missusasex.com> be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: December 16, 2010