WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miss Universe L.P., LLLP v. Miss Pennsylvania Inc.
Case No. D2001-1296
1. The Parties
The Complaint was filed by Miss Universe L.P., LLLP, a Delaware Limited Liability Limited Partnership with a principal place of business at 1370 Avenue of the Americas, New York, New York 10019, United States of America. The Respondent is Miss Pennsylvania Inc. According to BulkRegister.com the Respondentís address is US. GOV. Domains (DOM) Protected, Washington, D.C., 0000000, United States of America.
2. The Domain Name and Registrar
The domain name which is the subject of this Complaint is <misspennsylvaniausa.com>. The Registrar of the domain name is BulkRegister.com.
3. Procedural History
The Complaint submitted by Complainant was received on October 25, 2001, (electronic version) and October 31, 2001 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
An Acknowledgement of the Complaint was sent by the WIPO Center to the Complainant on October 29, 2001, by e-mail.
On October 29, 2001, a request for Registrar Verification was transmitted by the WIPO Center to the Registrar, BulkRegister.com.
By email dated November 7, 2001, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <misspennsylvaniausa.com>.
- The Respondent, Miss Pennsylvania Inc. is shown as the "current registrant" of the domain name. The Respondentís address is recorded as US. GOV. Domains (DOM) Protected, Washington (sic), DC 0000000, US.
- The administrative contact and technical contact is CP Corp Global WA, D.C., US GOV Domains (DOM) Protected at P.O. Box 64 Suite C2 Marketplace, Providence, BWI BWI, TC. BWI is the abbreviation for British West Indies. TC represents Turks & Caicos.
- The UDRP applies to the registration.
- The current status of the domain name registration <misspennsylvaniausa.com> is "Registrar LOCK".
- The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on November 8, 2001, transmitted by registered post a notification of the Complaint and Commencement of Administrative Proceedings to the Respondentís administrative contact in the British West Indies. The Center was unable to send the Complaint by courier to the Respondent as Respondentís address was incomplete, lacking a street address and zip code in Washington, DC. The Center was also unable to transmit the documents by e-mail to the Respondent at <email@example.com>. The Center was unable to transmit the documents by e-mail to Respondentís representative at <firstname.lastname@example.org> and by fax to Respondentís representatives at the fax address provided by the Registrar. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days, namely November 28, 2001. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On November 29, 2001, the Center received an e-mail from Sandra Rennert for the Respondent addressed not to WIPO Centerís e-mail address but to Ms. Calvaruso, the representative for the Complainant, seeking advice on which domain name is being questioned and what process she would go through to defend her rights. The Center forwarded the e-mail to Ms. Calvaruso on November 29, 2001.
No further communications were received from the Complainant or the Respondent.
No Response was received by the WIPO Center from the Respondent within the prescribed time. A Notification of Respondent Default was issued on November 29, 2001.
WIPO Center invited Mr. Ross Carson of Ogilvy Renault, Ottawa, Ontario, Canada to be the Panelist in the case. It transmitted to Mr. Carson a Statement of Acceptance and requested a Declaration of Impartiality and Independence. Mr. Carson forwarded to the WIPO Center an executed Declaration of Impartiality and Independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On December 7, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by December 21, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
(a) The Complainant Miss Universe and its predecessors-in-interest have used the MISS USA mark throughout the United States and the world in connection with beauty pageants and related goods and services for almost fifty years.
(b) The Complainant is the owner of the famous MISS USA mark, including the trademark registration for education and entertainment services registered in the United States Patent and Trademark Office under Registration No. 1,601,484. The Complainant has attached a copy of the Registration as Annex C to the Complaint. Complainant has provided a list of its U.S. trademark and service mark registrations for its MISS USA mark at page 6 of the Complaint.
(c) In addition to its MISS USA marks, Complainant has also registered MISS TEEN USA and numerous other trademark and service mark registrations for variations of its MISS USA mark as shown on pages 6 to 9 of the Complaint, including MISS PENNSYLVANIA-U.S.A. registered on June 18, 1982 under Registration No. 767,969. Copies of sample registration certificates are attached as Annex C to the Complaint.
The Complainant Miss Universe L.P., LLLP and its predecessors-in-interest have used the Complainantís MISS USA mark throughout the United States and the world in connection with beauty pageants and related goods and services for almost fifty years.
Complainant submits that the MISS USA Marks, as applied to Complainantís pageants, are now amongst the best-known trademarks in the world. Complainantís MISS USA Marks are exclusively associated with Complainant and its famous beauty pageant services and related goods and services. By Complainantís long use, extensive promotion, advertising and unsolicited publicity relating to its MISS USA Marks, its beauty pageants and related goods and services, Complainant has established a valuable reputation and has achieved enormous goodwill in its MISS USA Marks throughout the world.
Complainant also has an active presence on the Internet, operating a number of websites including a site at <missusa.com> which is devoted exclusively to the promotion of the Miss Universe Pageants. Complainant also owns and licenses the use of numerous websites reflecting its trademarks, such as <missmississippiusa.com>, <misssouthdakotausa.com>, to its licensed State Directors to promote the preliminary pageants to the MISS USA Pageant.
5. Partiesí Contentions
(i) The domain name <misspennsylvaniausa.com> is identical to a trademark or service mark in which the Complainant has rights.
The domain name <misspennsylvaniausa.com> is identical to Complainantís registered trademark MISS PENNSYLVANIA-U.S.A.
The domain name is also confusingly similar to Complainantís MISS USA marks.
(ii) Respondent has no rights or legitimate interests in respect of the domain name <misspennsylvaniausa.com> .
The domain name in dispute 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.
Complainant submits that Respondent is known by the company name Capital Placements, Inc., the name in which the domain name was originally registered. (See Annex A to Complaint.) The Network Solutions printout at Annex A shows that Capital Placements Inc. has the same administrative contact and technical contact as the Respondent.
The renewal was made in the name of Respondent, Miss Pennsylvania Inc. Complainant submits that Respondent renewed the domain name in its name in an attempt to evade the ICANN proceeding after it had knowledge of Complainantís rights in the MISS PENNSYLVANIA-U.S.A. Mark and after its agent had repeatedly advised Miss Universeís attorneys that it would transfer the disputed domain name to Miss Universe (Exhibit E to Complaint).
(iii) Respondent registered and is using the domain name <misspennsylvaniausa.com> in bad faith.
Complainant submits that Respondent "Miss Pennsylvania Inc." which is the present registrant of the domain name, and Capital Placements, Ltd., the previous registrant prior to renewal of the domain name, are one and the same person or company.
In or about July 2000, Complainant discovered that the domain name <misspennsylvaniausa.com> had been registered by Capital Placements, Ltd. at an address in the British West Indies. Complainantís attorneys sent a letter to Capital Placements, Ltd. on October 26, 2000, demanding that Capital Placements, Ltd. cease use of the domain name and transfer it to the Complainant. (See Exhibit E to Complaint). The registrantís agent, Lyle Mortensen, responded that registrant would transfer the domain name to Complainant in exchange for money in excess of registrantís costs in acquiring it. Correspondence continued for several months. Complainant would not agree to pay any additional amount demanded by registrant. In a letter dated January 24, 2001, and in a telephone discussion in May 2001, registrantís agent agreed to transfer the domain name to the Complainant herein, Miss Universe. Miss Universeís counsel sent several Registrant Name Change Agreements to registrantís agent and refrained from instituting an ICANN proceeding. Registrantís agent did not execute the agreement.
In August 2001, the Complainant Miss Universe learned that the domain name registration had been renewed in the name of Miss Pennsylvania Inc. at the same British West Indies address listed for the original registrant Capital Placements, Inc. The WHOIS reports are attached as Exhibit A which show the mailing address of the current registrant Miss Pennsylvania Inc. as US. GOV. Domains (DOM) Protected, Washington, D.C., 0000000, U.S. which is an incomplete address, lacking a street address and zip code. The WHOIS report shows the same administrative and contact addresses for Miss Pennsylvania Inc. as for the previous registrant Capital Placements, Ltd.
In a letter dated August 7, 2001, Complainant wrote to Lyle Mortensen, the agent for Capital Placements, Ltd. advising that he had not sent Complainant an executed Agreement to transfer the domain name to Complainant. Complainant advised Mr. Mortensen that it had discovered on August 7, 2001, that Mr. Mortensenís client had renewed its registration in the name of a fictitious corporation named "MISS PENNSYLVANIA INC." at a fictitious address. Complainant advised that unless Complainant received an executed Agreement by September 1, 2001, Complainant would take all action necessary to protect its rights.
Complainant was advised that Lyle Mortensen no longer represented the Respondent/registrant and that Complainant should address its concerns with Sandra Rennert via facsimile. Complainant transmitted a letter by fax to Ms. Sandra Rennert and Capital Placements, Ltd. at fax no. 702-798-9994 on September 10, 2001, advising that she had agreed to execute a Registrant Name Change Agreement. Complainant advised that it recently discovered that Ms. Rennertís company renewed its registration in the name of a fictitious corporation named "MISS PENNSYLVANIA INC" at a fictitious address. Complainant advised that unless it received an executed agreement by September 17, 2001, Miss Universe would take all actions necessary to protect its rights.
No reply was received.
The Respondent failed to submit a Response.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:
(i) That the Complainant has rights in a trademark or service mark with which the Respondentís Domain Name is identical or confusingly similar;
(ii) That the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
6.1 The first issue is whether the Complainant has rights in a trademark or service mark and whether the domain name in dispute <misspennsylvaniausa.com> is identical or confusingly similar to that mark.
Complainant has established common law rights in its trademarks MISS PENNSYLVANIA-U.S.A., MISS USA and related marks by extensive use of the trademarks in association with its famous beauty pageant services and related goods and services.
The domain name in dispute is identical or confusingly similar to Complainantís trademark MISS PENNSYLVANIA-U.S.A. and also confusingly similar to its trademark MISS USA and is likely to lead people to believe that the domain name <misspennsylvaniausa.com> is connected with the Complainant.
The Panel finds that the domain name in dispute is confusingly similar to Complainantís trademark MISS PENNSYLVANIA-U.S.A.
6.2 The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interest in the domain name in dispute.
Respondent has never been known by the trade name Miss Pennsylvania USA. The Complainant and its associated organizations own and use the trademark MISS PENNSYLVANIA-U.S.A. Complainant has never authorized Respondent to use the trademark MISS PENNSYLVANIA-U.S.A.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.
6.3 The third matter which the Complainant must prove is that the domain name has been registered and is used in bad faith.
The Complainantís trademarks are well known and the balance of probabilities is that the Respondent knew of the Complainantís trademarks and trade name at the date of registration.
The agent for the earlier registrant Capital Placements, Inc. had the same address and Administrative Contact as the current Registrant Miss Pennsylvania Inc. Capital Placement, Inc. made an offer to sell the domain name for an amount over and above the documented out of pocket costs directly related to the domain name (Exhibit "Eí, fax memorandum November 13, 2000) in response to an inquiry by Complainantís agent. The Panel finds that the earlier and subsequent registrants are fictitious corporations. The Complainant has established that the Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant for valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the domain name (Paragraph 4(b)(i) of the Uniform Domain Name Dispute Resolution Policy).
The Respondent made deliberate attempts to conceal its true identity, which is further evidence of bad faith. The Respondent provided false information to the Registrar. Respondent identified itself as Miss Pennsylvania Inc. of US. GOV Domains, Washington, D.C. 0000000. Respondent did not provide a telephone number or fax number. The administrative contact for the Respondent is CP Corp Global WA, DC, mailto:LegalPower@usgov.com, US Gov Domains (DOM) Protected, P.O. Box 64 Suite C2 Marketplace, Providence, BWI, WI, TC. According to the Complainant (para. 22 of the Complaint) the name Miss Pennsylvania Inc. is a fictitious name. An attempt by the WIPO Center to deliver the Complaint by courier at the address provided by the Respondent to the Registrar could not be completed as the address was incomplete, lacking a street address and valid zip code. The WIPO Center was also unable to transmit the Complaint by e-mail to the Respondent at <email@example.com>. The only valid address for mailing of the Complaint was the address of the Administrative Contact/Technical Contact, CP Corp. Global WA, DC. in the British West Indies. The Center was unable to complete transmission of the Complaint by fax to the attention of Ms. Sandra Rennert at CP Corp Global WA D.C. On November 29, 2001, Ms. Rennert transmitted an e-mail from mailto:firstname.lastname@example.org to the Center confirming that she was aware that a Complaint had been filed "against a domain name that myself or a client own".
Deliberate actions in providing false contact information to the registrar and changing contact details in an attempt to thwart Domain Dispute Proceedings is a violation of the Respondentís warranty under paragraph 2(a) of the Uniform Dispute Resolution Policy and constitutes bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 at pp. 3 and 6).
At the date of registration of the domain name in the name of the current registrant on October 5, 2001, the Respondent must have known of the trademarks MISS PENNSYLVANIA-U.S.A. and MISS U.S.A. The Respondent has registered the domain name <misspennsylvaniausa.com> in bad faith primarily for the purpose of disrupting the business of a competitor.
Passive holding of a domain name can constitute use in bad faith, particularly where the registrant has no bona fide use for the domain name and the only purpose appears to be to prevent a competitor from using the domain name. The Administrative Panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 stated at Paragraph 7.9 "... the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith".
Respondent has provided no evidence of any actual or good faith use of the domain name in dispute and has not filed a Response to refute the allegations in the Complaint.
Respondent is not making any kind of legitimate commercial, noncommercial or fair use of the domain name <misspennsylvaniausa.com>. Complainant avers that Respondent has interfered with the Complainantís use of its trademark as a domain name.
Members of the public or business community contacting <misspennsylvaniausa.com> will reach an inactive site which reflects negatively on the Complainant owner of the trademarks MISS PENNSYLVANIA-U.S.A. and MISS USA. See for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Sport Chalet, Inc. v Ski Chalet, Inc. WIPO Case No. D2000-1834.
The Panel concludes that the Respondent has registered and is using the domain name <misspennsylvaniausa.com> in bad faith.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <misspennsylvaniausa.com> be transferred to the Complainant.
Dated: December 19, 2001