WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miss Universe L.P., LLLP v. Oliya Productions
Case No. D2002-0765
1. The Parties
Complainant is Miss Universe L.P., LLLP ("Miss Universe"), 1370 Avenue of the Americas, New York, NY 10019, United States of America.
The Respondent is Oliya Productions, 14 Bond Street, Great Neck, NY 1215, United States of America, Dave Lang, administrative and technical contact (Registrant of <miss-universe.org>).
2. The Domain Name and Registrar
The Domain Name in issue is: <miss-universe.org> (the "Domain Name").
The registrar is Tucows, Inc. ("Tucows"), 96 Mowat Ave., Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Miss Universeís complaint in hard copy on August 15, 2002, and via email on August 19, 2002.
The Center contacted Tucows on August 15, 2002, requesting verification of the Domain Nameís registration. On August 15, 2002, the Center received confirmation from Tucows that:
1) Complainant had sent it a copy of the complaint, 2) the Domain Name was registered with Tucows, 3) Respondent is the current registrant, 4) the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name, and 5) the current status of the Domain Name is active. Tucows additionally confirmed the contact name, address, email address, and phone number for the administrative and technical contact for the Domain Name.
After verifying that the complaint (the "Complaint") complied with the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), and Policy, the Center notified the registrant and technical contacts on August 20, 2002, of the commencement of the administrative proceeding. It notified Respondent that Complainant had submitted a complaint as described above. Accordingly, the administrative proceeding commenced on August 20, 2002. The notification requested that Respondent reply by September 9, 2002, in accordance with Paragraph 5 of the Rules and the Supplemental Rules. Furthermore, the notification identified the consequences of default, namely that a panel would still decide the case and that, in accordance with Rules, Paragraph 14, the panel could draw any appropriate inferences from the default. The notification additionally notified Respondent that Complainant elected a single member panel who would be appointed within five days after the Response was due. In the event that Respondent preferred a three member panel, Respondent could so designate, with the required payment, and would have the option to nominate three panelists for possible inclusion on the panel. Finally, Respondent was notified of the identity and contact information of the Case Manager. A copy of the notification was e-mailed to Complainant.
Having received no response to the notification by the September 9, 2002, deadline, the Center issued a Notification of Respondent Default on September 11, 2002. The notice stated that the Center would appoint a single panelist to comprise the panel, the panel would be informed of Respondentís default and it would be up to the panelís discretion whether to consider any late-filed Response.
On September 13, 2002, Complainant and Respondent were advised of the identity of the undersigned sole Panelist. Additionally, the Center notified Complainant and Respondent that the Panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
4. Factual Background; Partiesí Contentions
a. The Trademark
Miss Universeís Complaint alleges, and submits evidence, that its MISS UNIVERSE mark is federally registered in connection with a wide variety of goods and services in the United States. Miss Universe has also registered the MISS UNIVERSE mark in 85 other countries throughout the world as stated in the Complaint, examples of which are shown in Exhibit C to the Complaint. Miss Universeís federal registration in the United States for its MISS UNIVERSE trademark predates the Respondentís registration of the Domain Name at issue here.
Miss Universe conducts business on the Internet at <missuniverse.com>.
b. Jurisdictional Basis
As stated, Tucows verified that the Policy applies to the Domain Name. Therefore, as this proceeding is likewise governed by the Policy in accordance with it, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
c. The Complaint
Miss Universe asserts as follows:
ē Complainant has enjoyed extensive and exclusive use of the MISS UNIVERSE trademark.
ē The MISS UNIVERSE mark is famous and incontestable.
ē The disputed Domain Name is confusingly similar to the trademark MISS UNIVERSE.
ē Respondent has no legitimate interest in the Domain Name or in the MISS UNIVERSE mark.
ē Respondent has not set forth any legitimate right to use the Domain Name.
ē Respondent has registered and used the Domain Name in bad faith.
As noted above, Respondent has provided no response, although the deadline for doing so expired on September 9, 2002. Accordingly, the Respondent is in default. Given Respondentís default, the Panel can infer that Complainantís allegations are true where appropriate to do so. Talk City Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a) of the Policy.
5. Discussion and Findings
Accordingly, the Panel now proceeds to consider this matter on the merits in light of the Complaint, uncontested as no response was filed, the Policy, the Rules, and other applicable authority.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to each Domain Name, each of the following:
(i) The Domain Name in issue is identical or confusingly similar to Miss Universeís trademark at issue here; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
a. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the dispute, being commonly known by the Domain Name, or making legitimate noncommercial or fair use of the Domain Name.
b. Complainantís Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
The Domain Name <miss-universe.org> is, but for the addition of the ".org" top-level domain (TLD) and the insertion of a hyphen, identical to the registered trademark MISS UNIVERSE belonging to Complainant Miss Universe, as well as to Complainantís own domain name <missuniverse.com>. Because web users typically add a TLD such as ".com", ".net", or ".org" to a mark when attempting to locate the markís owner on the Internet, and because the TLD is a functional necessity rather than an arbitrary trademark choice, the TLD is properly ignored when considering similarity. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001). Furthermore, because the hyphen is a single punctuation mark used to separate two words of a famous name, it is also properly ignored when considering similarity. The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038 (March 17, 2000) (<euro-tunnel.com> held identical to registered mark EUROTUNNEL); see, e.g., In re Sears, Roebuck and Co., 2 U.S.P.Q.2d 1312, 1314 (TTAB 1987) (CROSSOVER and CROSS-OVER held legally identical in sound and appearance by Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office).
For the above reasons, the Panel concludes that the Domain Name is identical or confusingly similar to Miss Universeís trademark. Complainant has met the requirement of Paragraph 4(a)(i) of the Policy.
(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name.
There is no evidence in the record that Respondent has any legitimate interest in the Domain Name. The fame, distinctiveness, strength, and priority of use of Complainantís mark, coupled with the Domain Name being identical to Complainantís mark and Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondent has no rights or legitimate interest in the Domain Name.
(iii) Registration and Use in Bad Faith
In Exhibit E of the Complaint, Miss Universe submits copies of two letters which were sent to Respondent. These letters were dated November 26, 2001, and January 9, 2002. The letters put Respondent on actual notice that the MISS UNIVERSE mark is owned by Miss Universe and requested that Respondent discontinue use of the Domain Name. Complainant relies upon this correspondence, and upon Respondentís failure to answer the letters, in support of its bad faith theory. Non-response to a letter, however, proves little, absent an obligation to respond; and in any event these letters post-date Respondentís registration of the Domain Name.
Of greater significance are the fame of the mark, its federal registration, certain terms incorporated by Respondent into its registration, and the Respondentís lengthy passive holding of the Domain Name.
Marks that have a "high degree of inherent or acquired distinctiveness" are entitled to a greater scope of protection than others. See Digital City Inc. v. Smalldomain, WIPO Case No. D2000-1283 (November 6, 2000). This Panel finds that Complainant has demonstrated that its longstanding use of the MISS UNIVERSE mark, its high volume of business transacted under or in connection with the mark, as well as the worldwide use, registration, and recognition of the mark, places its mark in the category of trademarks with a "high degree of Ö acquired distinctiveness" and that the mark, as a result of its fame, enjoys a wide scope of protection. This fame makes it likely that Respondent was aware of the existence of the Complainant and of its trademark rights as of the time it was registered.
The federal registration of the MISS UNIVERSE mark prior to Respondentís registration of the Domain Name provides further support for this conclusion. Under Section 22 of the United States Trademark Act, "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrantís claim of ownership thereof." As a matter of United States trademark law, therefore, it may be presumed that Respondent was on notice of Complainantís rights in the MISS UNIVERSE mark prior to registering the Domain Name. See, e.g., Barneyís Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (April 2, 2000).
Respondent, however, has made no apparent active use of the Domain Name. Attempts to access the URL "www.miss-universe.org" do not resolve to an active web site. That alone, however, does not mean that Respondent necessarily avoids transfer under the Policy. The fact that Respondent registered a domain name identical to a famous mark owned by another, and then passively held the Domain Name, may in an appropriate context constitute sufficient evidence of bad faith. See, e.g., Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (registration together with inaction can constitute bad faith). Numerous panels have followed this decision. See, e.g., Ticketmaster Corp v. Spider Web Designs, Inc., WIPO Case No. D2000-1551 (February 4, 2001) (citing cases). While this Panel is not prepared to conclude that nonuse of a Domain Name will automatically constitute bad faith, it is, on the facts of this case, a significant factor. "When a domain name comprised of a genuinely famous mark is registered and then simply held by the registrant with no use at all, that itself constitutes bad faith and cybersquatting." General Motors Corp. v. Vette Owners, WIPO Case No. D2000-0595 (October 20, 2000) citing Telstra.
Taking into account the longstanding use of the MISS UNIVERSE mark by Complainant combined with the worldwide registration, the fame of the mark, and the lengthy passive holding of the Domain Name by Respondent, as well as Respondentís failure to respond, either in the manner required by this proceeding or otherwise, the Panel is persuaded that Respondent engaged in bad faith registration and use as defined in the Policy.
In light of the above findings and analysis, the Panel decides that Miss Universe has met its burden of proving that: (1) the Domain Name is identical or confusingly similar to the mark belonging to the Complainant; (2) Respondent has no rights or legitimate interest in the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel requires that registration of the <miss-universe.org> Domain Name be transferred to Miss Universe L.P., LLLP.
Dated: September 27, 2002