WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Miss World (Jersey) Limited v. Gerald Goldfaden

Case No. D2001-0113

 

1. The Parties

1.1. This Complaint was filed by Miss World (Jersey) Limited, a limited liability company incorporated in Jersey, the Channel Islands, United Kingdom under registered number 17598, having its registered office in St Hellier, Jersey CI but its principal place of business in London, United Kingdom. After filing this Complaint and before the delivery of this decision, Miss World (Jersey) Limited changed its name to Miss World Limited. The legal entity previously known as Miss World (Jersey) Limited and now known as Miss World Limited is referred to herein as "Complainant".

1.2. The respondent is Gerald L Goldfaden, an individual of Livingston, New Jersey, United States of America ("Respondent").

 

2. The Domain Name and Registrar

2.1. The domain name the subject of this Complaint is <missworld.com>.

2.2. The registrar of this domain name is Network Solutions, Inc. of Herndon, Virginia, United States of America ("Registrar").

 

3. Procedural History

Issuance of Complaint

3.1. On January 19, 2001, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on January 19, 2001 and the copy of the Complaint submitted by courier was received on January 24, 2001. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center to the Complainant by email dated January 24, 2001.

Confirmation of Registration Details

3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on January 26, 2001. By email to the WIPO Center on

January 30, 2001, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain name the subject of this Complaint; confirmed that the current registrant of that domain name is the Respondent, and provided postal, telephone, facsimile and email contact details; confirmed that the Uniform Policy applies to the domain name the subject of this Complaint; and informed that the current status of that domain name is "active".

Notification to Respondent

3.3. On January 31, 2001, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier, facsimile and email to the addresses provided by the Registrar. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date.

3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Rule 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

Filing of Response

3.5. The Notification of Complaint and Commencement of Administrative Proceeding noted that the last day for filing a Response was February 19, 2001. On

February 13, 2001, at the request of the Respondent, the WIPO Center extended to February 26, 2001 the deadline for filing a Response. A further request by the Respondent for extending the deadline, made on February 26, 2001, was refused by the WIPO Center. On February 27, 2001, the Respondent filed with the WIPO Center a Response. On the same day the WIPO Center issued to the Respondent a Response Deficiency Notification. In response to that Notification, the WIPO Center received from the Respondent on March 2, 2001 a corrected Response. As observed by the Complainant in its email communication to the WIPO Center on

March 5, 2001, the Respondent added further substantive material to the corrected Response in addition to correcting the specific deficiencies identified by the WIPO Center. This Administrative Panel has exercised its discretion to treat the corrected Response as a Response properly filed, and accordingly has taken the matters disclosed in the corrected Response into account in determining this matter.

Notification of Complainantís Change of Name

3.6. By email on February 22, 2001, the Complainant informed the WIPO Center that it had changed its name after the date of filing of the Complaint. The change of name, which occurred on February 9, 2001, was evidenced by documentation that was subsequently sent to the WIPO Center by facsimile and post. Since February 9, 2001, the Complainant has been named Miss World Limited.

Constitution of Administrative Panel

3.7. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On

March 7, 2001, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, stating that

Dr. Christie had submitted a Statement of Acceptance and Declaration of Impartiality and Independence and had been appointed the sole Panelist in this case, and informing that absent exceptional circumstances a decision would be provided by this Administrative Panel by March 20, 2001. The case before this Administrative Panel was conducted in the English language, being the language of the registration agreement applicable to the domain name in issue.

Compliance with the formalities of the Uniform Policy and the Uniform Rules

3.8. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.

Submissions Subsequent to Filing of Response

3.9. On March 20, 2001 this Administrative Panel issued an Interim Order, as follows:

"The Administrative Panel has decided to exercise its discretion, pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), to request further information about the issue of when, how and with what consequence the Complainant first became aware of the Respondent's registration of the domain name the subject of the complaint."

"The Panel notes that the Respondent alleges he was contacted by the CEO of the Complainant, Mr Morley, in relation to the domain name, on August 30, 1996. The Panel invites the Complainant to respond in brief to the following questions, by Tuesday March 27, 2001:

1. When and how did the Complainant first become aware of the Respondent's registration of <missworld.com>?

2. What action in relation to the Respondent did the Complainant take at that time?

3. What further action, if any, in relation to the Respondent did the Complainant take on this matter prior to filing this complaint on

January 19, 2001?

4. If no further action in relation to the Respondent was taken, why not?"

In addition, and pursuant to Rule 15, the Panel extended to April 3, 2001, the date by which a decision in this case would be rendered.

3.10. On March 22, 2001, the Complainant by email filed with the WIPO Center a document (hereafter "Reply") containing a reply to the questions raised by the Panel in the Interim Order.

3.11. On March 23, 2001, the WIPO Center issued the following communication to the Respondent:

"The Administrative Panel, having received the Complainant's response to the Panel's March 20, 2001 request under Rule 12 for further information, hereby formally invites the Respondent to provide to the Panel in brief his observations (if any) on the matters disclosed in the Complainant's response, by Tuesday March 27, 2001."

3.12. On March 26, 2001, the Respondent by email filed with the WIPO Center a document (hereafter "Rebuttal") containing observations on the Reply. On March 30, 2001 a further communication was received by the WIPO Center from the Respondent, relating to matters other than those addressed in the Reply. This communication was not taken into account by this Administrative Panel in reaching its decision.

 

4. Factual Background to this Complaint

Complainantís Activities and Trademarks

4.1. "Miss World" is the title of the world famous beauty pageant ("the Miss World contest") which originated in the United Kingdom in 1951 when the late Eric Morley, the then Public Relations Director of a small leisure company called Mecca, staged an event to promote the Festival of Britain in London. From that date onwards, the Miss World contest was used as both a promotional vehicle for Mecca and as a charitable fund-raising vehicle. Numerous charities have been helped over the years including, in particular the Variety Club of Great Britain, a prominent children's charity. In total, it is estimated that over £100m has been raised for children's charities through the Miss World contest and associated activities over the 50 years of its operation. The Miss World contest grew in scope over the years following its inception in 1951 and a number of national beauty pageants were set up to provide the finalists for the Miss World contest itself. By the time the 50th Miss World contest was held in December 2000, there were more than 90 finalists, each chosen following national pageants licensed by the Complainant. Many of those national pageants participate directly in the raising of money for charity. The fact that, in addition to the Miss World contest itself, scores of these national contests are also held each year, helps to explain why the Miss World name has become so well known in so many countries.

4.2. The original owner of the trademarks and goodwill in the MISS WORLD mark was an English company called Mecca Limited, which carried on the business of staging the Miss World contest up to 1979. On December 28, 1979, the Complainant acquired from Mecca Limited the worldwide goodwill, trademarks and other rights associated with, inter alia, the promotion of the Miss World contest for valuable consideration. In order to protect the value of the MISS WORLD trademark, the Complainant has obtained trademark registrations for a number of trademarks (not confined to the MISS WORLD mark) in more than 70 countries worldwide, including Australia, Canada, Chile, France, Germany, Italy, Japan, Spain, United Kingdom, and United States of America. The primary activity for which the above marks are registered (and which activity falls within Class 41 of the classification of trademark services) is "entertainment services and more specifically the conducting of beauty competitions". In the case of the US registered trademark in class 41, the certificate records that the mark is registered in the US for "Entertainment Services Ė namely, conducting of beauty competitions" and that the first use in commerce of the MISS WORLD mark was January11, 1951. The UK registered trademark in class 41 states that the mark is registered in relation to "Services for the organisation of contests, beauty pageant servicesÖÖ".

Respondentís Activities

4.3. In early 1996, the Respondent developed the concept of holding beauty contests on the World Wide Web, with both participation in and voting for the contest being open to people throughout the world. The Respondent claims he chose to call his contest "Miss World Wide Web" because that indicated most clearly its association with the Internet and the democratic nature of its business model. The specific focus of his choice was the words: "Web" - Internet related; "World Wide" - democratic in nature; and, "Miss" - the universally accepted prefix associated with female beauty contests of every ilk. The Respondent applied for and obtained registration of approximately one dozen domain names for the purpose of representing his concept, including <missadultweb.com>, <missadultinternet.com>, <misswww.com>, and <missworld.com>. Other domain names subsequently registered by the Respondent include <missnudeweb.com> and <missnudeinternet.com>. The domain name the subject of this dispute, <missworld.com>, was registered on March 12, 1996. In addition, the Respondent applied for and obtained registration in the United States Patent and Trademark Office ("USPTO") of a number of trademarks corresponding to the words in these domain names, including MISS ADULT WEB, MISS ADULT INTERNET, MISS NUDE INTERNET, MISS NUDE NET, MISS WORLD WIDE WEB, and MISS WEB.

4.4. On August 23, 1996 the Respondent received a fax from Mr Eric Morley, then Executive Chairman of the Complainant. The substantive contents of this fax are as follows:

"We understand you have registered on Internet our trading name for the purpose of running an Internet amateur beauty contest, which would be an infringement of our registered name. We understand that you were unaware of our registration. We are prepared, without prejudice, to refund your expenditure on the Internet and to avoid us both becoming involved in litigation, we are prepared to pay you $500 to cover your outlay and time. This offer is made without prejudice as you will be unable to use the title without us engaging in what will be a costly lawsuit. As you can see by the [attached report of a] case in the paper, as registered owners we have every confidence of winning and obtaining substantial damages."

4.5. The Respondent claims that, following receipt of this fax, he had a conversation with Mr Morley in which Morley indicated he had no interest in the Internet, and was strictly concerned about the Respondentís use of the domain name in a manner which would damage the Miss World contest. Mr Morley died in November 2000, and the Complainant was unable to provide any evidence of either the written or oral communications between the Respondent and Morley. The Respondent subsequently replied to Morleyís by fax on August 30, 1996, the substantive contents of which stated:

"I am aware of the issue raised by my ownership of the Internic name and your concern about its usage. It is my hope and belief that, while it is not as simple or straightforward as the Harrods situation you have referred to, we can speedily resolve it with minimum legal recourse. Ö If the issue is as simple as you believe I will do the right thing. If it requires a business solution, as I believe it may, you can still expect my cooperation to resolve it in an equitable manner. Ö You have my commitment that I will do nothing to damage or use the name in question until you and I have had the full opportunity to resolve the issue."

4.6. Between August 1996 and July 1998, the Respondent was developing the concept of an on-line beauty contest, although little visible resulted. On May 7, 1998, the Respondent filed with the USPTO a Statement of Use in support of his application for a trademark registration of MISS WORLD WIDE WEB. This Statement of Use (a copy of which is Annex 16 to the Complaint) shows a web page at the URL http://www.missworld.com, announcing the inauguration of the Miss World Wide Web beauty contest. In July 1998, the Respondent was contacted by Mr David Altman, expressing his interest in purchasing the domain name <missworld.com>. Altman introduced himself as the owner of Empire Talent and Management, the company with the rights to the Miss World USA contest. Altman indicated his awareness of the Respondentís communications with Mr. Morley, and stated that he (Altman) had rights, which included setting up a Web presence for Miss World through his site <missworldUSA.com>. Altmanís interest in the domain name <missworld.com> was to procure it for himself and use it to attract traffic for the Miss World contest, the Miss World USA contest, and the Empire Talent and Management company.

4.7. In various ensuing conversations, the Respondent replied to Altman that he wished to develop a beauty contest of his own, and had no interest in parting with the domain name <missworld.com> because that was "the primary shortcut for accessing" his proposed site. The Respondent suggested that a "Miss World Wide Web" contest could form part of the Miss World contest, in the same way that the Miss USA and Miss Australia contests do Ė ie. the winner of the Miss World Wide Web contest would be a contestant in the Miss World contest. Altman said he would be willing to press the case for such an arrangement with Mr Morley, if Altman and the Respondent could reach agreement on the use of the domain name <missworld.com>. The Respondent indicated he would not sell the domain name, but would be amenable to a long-term lease of the domain name.

4.8. As a result of a verbal agreement with Altman, which appears to include the appointment of the Respondent as "East Coast agent" for advertising on the Miss World USA web site, the Respondent allowed the domain name <missworld.com> to resolve to a web site controlled by Altman, which the Respondent claims was located at the URL http://www.missworldusa.com. The Respondent claims that he received no commission income from this arrangement. In August 1998, Altman informed the Respondent that he was unable to persuade Mr Morley of an association between the Respondentís proposed beauty contest and the Miss World contest. The alternative propose by Altman, of an association between the Respondentís contest and the Miss World USA contest, was not acceptable to the Respondent, and accordingly he resolved at that time to not work any further with Altman. Nevertheless, the Respondent continued to permit the domain name <missworld.com> to resolve to a page providing a link to the Miss World USA contest site.

4.9. According to evidence provided by attachment to the Complaint, since at least November 14, 2000 (and for an unknown period before that about which the Complainant has no information) the domain name <missworld.com> has been used to divert internet users to web sites registered to two entities which, on the face of it, have nothing to do with the Respondent or the Complainant. When an Internet user points a web browser to the URL http://www.missworld.com, a page (a copy of which is Annex 17 to the Complaint) is displayed containing the following message:

"Announcement: if you are looking for the Miss World USA Contest Site you have reached the wrong address. If your browser is not automatically forwarded to the www.missworldusa.net site please use the above hyperlink."

4.10. If the user clicks on the hyperlink for missworldusa.net as suggested, he or she will be forwarded to a web site with the domain name <missworldusa.net>. However, this site is not active because the web page which comes up is simply a standard Network Solutions "Under Construction" page (a copy of which is at Annex 18 to the Complaint). At Annex 19 to the Complaint is a copy of the relevant extract from the Network Solutions WHOIS database (printed on January 16, 2001) which shows that the registrant of the domain name <missworldusa.net> is an entity called PM Consulting Corporation, 7921 Jones BranchDrive, Suite 445, Mclean, VA 22102 US. The connection (if any) between PM Consulting Corporation and the Respondent is not known to the Complainant. According to the Complainant, however, PM Consulting Corporation is not authorised by the Complainant to make use of any of the Complainant's trademark registrations or goodwill in the Miss World mark whether in the United States or anywhere in the world.

4.11. If the user does not click on the hyperlink to the missworldusa.net site within around 20 seconds, he or she will be automatically diverted to another web site having as its address, the domain name <supermodel.com>. This site appears to be concerned with features, interviews and information about models and the modelling world. A print out of the home page of the website at supermodel.com ("the supermodel.com site") is at Annex 20 to the Complaint. At Annex 21 to the Complaint is a copy of the relevant extract from the Network Solutions WHOIS database (printed on

January 16, 2001) which shows the registrant of the domain name <supermodel.com> to be Paxti Communications Corporation c/o Attorney Richard Goodamm Goodman, Rosenthal & McKenna P.C, 68 South Main Street, West Hartford CT 06107. The copyright notice at the foot of each page refers to "Paxti Entertainment Network Inc". Again, according to the Complainant, these entities are not related to the Complainant and they do not have any authorisation to use the MISS WORLD mark, whether in the United States or anywhere else in the world. At the supermodel.com site on January 16, 2001 there was an interview (a copy of a print-out of which is Annex 22 to the Complaint) with Mr David Altman, discussing "this yearís Miss World Pageant" and "the Miss World USA Pageant".

 

5. Partiesí Contentions

The Complaint

5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute, as follows.

5.2. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name <missworld.com> is identical to its registered trademark MISS WORLD.

5.3. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint contends that the Respondent did not acquire rights to the Complainantís trademark MISS WORLD prior to the Respondentís registration of the domain name; the Respondent has no connection with the Complainant or any company licensed by the Complainant to conduct beauty pageants or other activities associated with its business anywhere in the world; and despite the claim on certain web pages, the Respondent has not actually undertaken any on-line beauty contests. Further, although the Respondent has various trademark registrations in the USPTO, by virtue of the registered trademarks already registered for the name MISS WORLD in the Complainant's favour both in the United States and elsewhere in the world and its common law rights, the Respondent is clearly not in a position to use the MISS WORLD mark lawfully in connection with the sort of activities indicated on his various web-sites: namely the advertising or the running of beauty contests or the organisation of such events.

5.4. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that, by the date (March 12, 1996) of the Respondent's registration of the domain name <missworld.com>, the MISS WORLD mark, the Miss World contest and the Miss World licensed national pageants (including the associated Miss World America pageant in the US) must have been well known to the Respondent, especially given his evident interest in the business of running beauty contests. Given the Respondentís actual or constructive knowledge of the Complainantís mark and the Respondentís lack of a right or legitimate interest in those words, it follows that the Respondent registered the domain name <missworld.com> in bad faith. Further, the Statement of Use filed by the Respondent with the USPTO in support of his application for a trademark registration of MISS WORLD WIDE WEB constitutes a clear use or intended use by the Respondent of the MISS WORLD mark in the course of trade to promote services identical or similar to those carried on by the Complainant and for which the MISS WORLD mark is registered (in the US and elsewhere), which is a use of the domain name in bad faith. Also, the use of the domain name to resolve to a page containing a link to the Miss World USA site and to then divert to the supermodel.com site are both uses in bad faith, given that Altmanís license to use the MISS WORLD trademark and to run the Miss World USA contest was revoked by the Complainant in December 1999.

The Response

5.5. The Respondent contends he has a legitimate right to use the domain name <missworld.com> as "a shortened version of his site name as a shortcut to sites of his own", including in particular his proposed site for a Miss World Wide Web contest. The domain names <missworld.com> and <misswww.com> were selected as shortcuts to be used in order to simplify access to the site because it was judged an inconvenience to type missworldwideweb.com as a domain name, and because (so the Respondent recalls) it may not even have been possible to use <missworldwideweb.com> because of name length restrictions at the relevant time. The domain name was registered in good faith to establish a business presence for a new and unique online beauty contest to be conducted on the World Wide Web. It is Internet based and totally unrelated in any way to the "Miss World Contest".

5.6. Finally, the Respondent has tried over the past several years to cooperate in good faith with principals and authorized licensees of the Complainant, to insure that nothing in the use of the domain name in any way compromises or interferes with the rights of either the Complainant or of the Respondent. After communications with and promises made to Mr. Eric Morley, the Respondent has for several years, purposely avoided any direct use of the domain name to access the Respondentís site. The Respondent has instead, willingly and of his own volition, shared access with a bona fide licensee of the Complainant. He has done this by forwarding to a site run by David Altman anyone attempting to access a site at the URL http://www.missworld.com. The Respondent contends that the Complaint acknowledges that Altman was a bona fide licensee of the Complainant at the time of the Respondentís dealings with him. This shared access has been allowed to continue through to today, despite Mr. Altman's default in honoring agreements reached with respect to Altmanís company, the Miss World USA.com site, and the Respondent.

The Reply

5.7. The Complainantís Reply (in response to a request from this Administrative Panel to provide further information, as described in paragraph 3.9, above) stated as follows:

"1. When and how did the Complainant first become aware of the Respondent's registration of <missworld.com>? - The Complainant is unable to locate any documentation in its possession which sheds any light on the original date on which it or its officers became aware of the Respondent's registration of the domain name. A document produced by the Respondent purports to be a fax dated 30 August 1996 addressed to Mr Eric Morley, the then Chairman of the Complainant. This makes reference to a complaint made by Mr Morley to the Respondent about his registration of the domain name. The Complainant has been unable to locate a corresponding copy of the said fax. Sadly, Mr Morley himself is unable to shed any light on the events in question because he died on 9 November 2000. In the circumstances, it would be pure speculation for the Complainant to advance an explanation as to how and precisely when the Complainant first became aware of the Respondent's registration."

"2. What action in relation to the Respondent did the Complainant take at that time? - Again, without Mr Morley to speak to, it is not possible for the Complainant to shed any further light on precisely what action was or was not taken at the time save, that as far as the Complainant is aware, no legal action was commenced against the Respondent. The Complainant notes from the fax disclosed by the Respondent that threats of legal action had evidently been made by Mr Morley on behalf of the Complainant. It is clear from the fax that the Complainant did not accept that the Respondent had a legitimate right to the domain name and that this was communicated to the Respondent."

"3. What further action, if any, in relation to the Respondent did the Complainant take on this matter prior to filing his Complaint on 19 January 2001? - As far as the Complainant is aware, no active steps were taken against the Respondent prior to the initiating of these proceedings. There appear to have been only the initial complaints made by Mr Morley."

"4. If no further action in relation to the Respondent was taken, why not? - Mr Morley is no longer in a position to explain his thought process in relation to the domain name and the fact that he chose not to initiate further action at the time. It is probable, however, that he felt he had warned off the Respondent by registering his strong disapproval for what the Respondent had done. He had also made it clear, judging from the fax disclosed by the Respondent, that the right to take legal action was reserved. The Complainant, as the owner of world famous trademark, is often the target of those wishing to misappropriate its goodwill and to damage its trademark rights. In practice, it is not possible to take action in relation to each and every infringement or potential infringement everywhere and at all times. A balance has to be struck between the need to protect the Complainant's intellectual property rights and the costs which this entails in any given situation. Until shortly before the Complaint was initiated, the Complainant was not aware of the availability of the ICANN procedure, a procedure which was in any case not available during the first few years after the registration of the domain name. The Complainant further notes that no limitation period is prescribed in the Rules nor is there any procedural requirement to give notice to a potential Respondent before commencing proceedings for a determination under the Rules. The Complainant took the view (and still does) that the domain name incorporates its famous name and that no one else has a legitimate right or interest in that name save for the Complainant."

The Rebuttal

5.8. The Respondent made various observations on the matters on which the Panel sought further information and on the Complainantís Reply thereto, the most pertinent of which are as follows. In relation to question 1, the Respondent located and produced a copy of the fax communication to him from Morley in August 1996. In relation to question 3, the Respondent confirms that, following Morleyís initial contact in August 1996, no further steps were taken by the Complainant against the Respondent until the commencement of this action. In relation to questions 2, 3 and 4, the Respondent asserts:

"In the [Respondentís reply to Morley] a pledge was made to Mr. Morley: ĎYou have my commitment that I will do nothing to damage or use the name in question until you and I have had the full opportunity to resolve the issueí. The Respondent assumed (correctly at the time) that in dealing with Mr. Altman he was honouring this commitment to the legal agent for "Miss World" in the U.S. Ö The Respondent notes that the claim of "bad faith" on the part of the Respondent is extensively supported in their Complaint by statements relating to the divert going to Mr. Altmanís former site and that the Complainants have in these proceedings distanced themselves as much as possible from Mr. Altman, their former licensee. Miss World, USA was the valid, licensed U.S. outlet for the Miss World contest during the period of their relationship and during his dealings with the Respondent. Regardless of their current relationship, the Respondent acted in good faith with the Complainantís then valid representative. Ö The respondent finds it disingenuous that the Complainant has so thoroughly divorced their position from that of their licensee Mr. David Altman. Mr Altman claimed to be negotiating with the Respondent with the knowledge and approval of Mr. Morley. The agreement reached with Mr. Altman, although not honoured by him, was placed into effect by the Respondent to the benefit of both "Miss World USA" and thereby "Miss World". Ö The Respondent notes that it is his observation that there is expediency and convenience for "Miss World", to have benefited from Mr. Altmanís use of the missworldusa.com site in service of their relationship (and with the "free" traffic directed to them by the "divert") and then, after business weaknesses are noted or alliances fall apart, to attempt to use legal procedures rather then business means to ameliorate those difficulties."

 

6. Discussion and Findings

Domain Name Identical or Confusingly Similar to Complainantís Marks

6.1. The relevant part of the domain name the subject of this Complaint is <missworld>. The domain name is identical to the Complainantís trademark MISS WORLD.

Respondentís Rights or Legitimate Interests in the Domain Name

6.2. The Respondent claims that he chose the domain name <missworld.com> as a "shortcut" for a proposed web site called "Miss World Wide Web". This Administrative Panel has doubts as to whether this was in fact the primary motivation behind the Respondentís registration of the domain name. However, even assuming that this was the Respondentís primary motivation in registering the domain name, it does not follow that the Respondent at the time of registration had a right or legitimate interest in the domain name. The domain name is identical to the Complainantís trademark. That trademark is registered in a vast number of countries, and has become very widely known throughout the world. A desire to use anotherís trademark in a domain name so as to act as a "shortcut" to oneís own business or website name does not thereby vest any right or interest in the otherís trademark, and thus does not of itself vest any right or interest in the domain name.

6.3. Nevertheless, this Panel considers that the Complainant has not succeeded in discharging its burden of proof in relation to either this requirement or the requirement of bad faith in paragraph 4(a)(iii) (or possibly in relation to both requirements). The concluding words of paragraph 4(a) of the Uniform Policy expressly state that the Complainant must prove that each of the three elements of paragraph 4(a) are present. In this Administrative Panelís opinion, there are facts in the Response and the Rebuttal (found by this Panel as proven) which demonstrate either that the Respondent has since registration acquired a right or legitimate interest in the domain name, or that the Respondent has not used the domain name in bad faith, or possibly both. These facts are the Respondentís bona fide use of the domain name to divert to a website conducted by a licensee of the Complainant.

6.4. The Complainant asserted that since at least November 2000 the Respondent used the domain name for the purpose of resolving to a page containing only a purported link to the Miss World USA contest at http://www.missworldusa.net. The Respondent asserted that, commencing sometime in 1998 and continuing for an unspecified period, he used the domain name to divert to Altmanís Miss World USA contest web site at http://www.missworldusa.com. This assertion was not refuted by the Complainant. Thus, it must be concluded that the Respondent was using the domain name <missworld.com> to divert web browsers to Altmanís web site for the Miss World USA contest, for a period of time well before the commencement of this Complaint.

6.5. The Complainant has admitted that: "David Altman was formerly licensed by the Complainant to stage a contest in the USA aimed at providing a US finalist for the Miss World contest. Ö However, Mr Altman's relationship with the Complainant was discharged by the Complainant in December 1999 following his failure to pay licence fees." The Complainant does not specify the period during which Altman was licensed by the Complainant. However, the Respondent has asserted and the Complainant has not denied that Altman was a licensee of the Complainant for at least some period of time during which the Respondent used the domain name to divert web users to Altmanís Miss World USA contest site. It follows that, for at least some of the time during which the Respondent used the domain name to resolve to the Miss World USA contest site, the services offered at that site under the MISS WORLD trademark were bona fide.

6.6. This Administrative Panel concludes that this use of the domain name by the Respondent might constitute a use of the domain name of the type specified in paragraph 4(c)(i) of the Uniform Policy, and so might demonstrate that the Respondent has acquired a right or legitimate interest in the domain name. For it to constitute a use of that type, however, it must have been use "before any notice to [the Respondent] of the dispute". This raises the question of when the Respondent received notice of this dispute Ė was it when Mr Morley communicated with the Respondent in August 1996 or was it when the Complainant filed the Complaint in January 2001 (there being no other communications by the parties between these dates)? Although this Administrative Panel is inclined to the view that in this case notice of the dispute was received by the Respondent when the Complaint was filed, it does not need to answer the question. This is because whichever is the date on which the Respondent received notice of the dispute, the Complainant has failed to prove one or other (or possibly both) of the requirements of paragraphs 4(a)(ii) and 4(a)(iii). If notice of the dispute was received after the Respondentís use of the domain name, this use comes within paragraph 4(c)(i) and so demonstrates that the Respondent has a right or legitimate interest in the domain name. If, however, notice of the dispute was received before the Respondentís use of the domain name, this use nevertheless was use in good faith such as to preclude a finding that the Respondent has registered and is using the domain name in bad faith, as discussed below.

Domain Name Registered and Used in Bad Faith

6.7. This Administrative Panel is not saying that any act of good faith use of the domain name will, in all cases, preclude a finding that the Respondent has registered and is using the domain name in bad faith. It is quite possible to conceive of cases where a Respondent has registered and is using the domain name in bad faith, and so paragraph 4(a)(iii) of the Uniform Policy is satisfied, yet at some stage between registration of the domain name and the commencement of the Complaint there has been some good faith use by the Respondent. In those cases, the good faith use by the Respondent will not entitle the Respondent to succeed unless that use demonstrates, either by virtue of paragraph 4(c) or otherwise, that the Respondent has acquired a right or legitimate interest in the domain name.

6.8. What this Administrative Panel is saying is that, in the circumstances of this particular case, there was an act of good faith use of the domain name which, even if it did not come within paragraph 4(c)(i) of the Uniform Policy, nevertheless is such as to mean it cannot be said the Respondent is using the domain name in bad faith. The particular circumstances that are relevant to this conclusion are that the Respondent believed Altman to be a licensee of the Complainant, that Altman was in fact a licensee of the Complainant, that the Respondentís use of the domain name to divert to Altmanís site continued for more than a trivial period, and that the Complainant did not object to the Respondentís use of the domain name until after Altman ceased to be the Complainantís licensee. (Although it is not clear from the facts whether the Complainant knew of the Respondentís use, this is not relevant because it does not change the fact that the Respondent was acting in good faith.) In these circumstances, the Respondentís use of the domain name was such as to preclude a finding that the Respondent both registered and is using the domain name in bad faith as required by paragraph 4(a)(iii) of the Uniform Policy.

 

7. Decision

7.1. This Administrative Panel decides that the Complainant has not proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of the Complaint.

7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel denies the request that the Registrar, Network Solutions, Inc., be required to transfer to the Complainant, Miss World (Jersey) Limited (now known as Miss World Limited) the domain name <missworld.com>.

 


 

Andrew F. Christie
Sole Panelist

Dated: April 6, 2001