WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miss World Limited v. Mr. Ashot Khachatryan
Case No. D2008-0178
1. The Parties
The Complainant is Miss World Limited, of St.Helier, Jersey, Channel Islands, represented by Marks and Clerks Solicitors of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. Ashot Khachatryan, of Yerevan, Armenia.
2. The Domain Name and Registrar
The disputed domain names are <missmisterworld.org>, <missmisterworld.com> and <missmisterworld.net> (hereafter together referred to as the “Domain Names”) and are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2008 by email and on February 7, 2008 in hard copy. On February 5, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Names at issue. On February 5, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. On February 8, 2008, the Respondent requested the Center per email to reject the Complaint. In response to this email, on February 8, 2008, the Center informed Respondent that the Complaint was still undergoing compliance review and that the Respondent would be notified when such review was completed. On February 11, 2008, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2008. The Respondent submitted its Response on February 28, 2008.
The Center appointed Wolter Wefers Bettink as presiding panelist and Charters Macdonald-Brown and Assen Alexiev as panelists in this matter on March 19, 2008. 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.
The language of the proceedings is English.
4. Factual Background
The Complainant is Miss World Limited, a company which organizes the Miss World beauty pageant. This yearly pageant is an international event with contestants from more than a hundred countries worldwide. In addition, the Complainant organizes a Mr. World beauty pageant, which has contestants from 56 countries.
The Complainant is the owner of – amongst others – the following trademark registrations (hereafter, collectively referred to as the “Trademarks”):
- MISS WORLD, registered with the World Intellectual Property Organization on September 19, 2003, under registration number 816100 (Annex 4, Complaint) with validity in various countries, including Armenia;
- MISS WORLD, registered with the Office for Harmonisation in the Internal Market (European Community registration) under registration number 151282 with filing date April 1, 1996 (Annex 5, Complaint);
- MISS WORLD, registered with the United States Patent and Trademark Office under registration number 877221, with filing date April 5, 1968 (Annex 5, Complaint);
- MR WORLD, registered with the Office for Harmonisation in the Internal Market (European Community registration) under registration number 151340 with filing date April 1, 1996 (Annex 5, Complaint);
- MR WORLD, registered with the World Intellectual Property Organization on April 1, 1997, under registration number 670490 (Annex 3, Complaint) with validity in various countries;
- MR WORLD, registered with the United States Patent and Trademark Office, under registration number 2,466,852 with filing date January 2, 1998 (Annex 5, Complaint);
All Trademarks are registered for goods and services regarding organization, running and staging of contests, competitions and pageants.
The Respondent is the president of an organization which organizes a yearly beauty contest in Armenia for young children. The Respondent registered the Domain Names on February 16, 2004.
5. Parties’ Contentions
According to the Complainant, its MISS WORLD trademarks are famous throughout the world. The Complainant describes the history of the Miss World beauty pageant, of which yearly pageants have been organized since 1951 and today are followed by hundreds of millions spectators around the world. The Complainant notes that, in addition to the famous yearly international Miss World contest itself, the national Miss World contests are held in over 120 countries, including Armenia. These national contests have contributed to the extensive reputation of the MISS WORLD trademarks around the world.
Since 1996, the international Mr. World contest has been organized on the same basis as the Miss World contest. In addition, 56 countries hold a yearly national Mr. World contest. The Complainant contends that Mr. World, through its connection with the Miss World contest, also holds a substantial reputation throughout the world.
With respect to the fame of its trademarks, the Complainant also contends that the Miss World and Mr. World pageants have been heavily promoted on websites such as “www.missworld.com”, “www.missworld.tv” and “www.mrworld.tv”.
The Complainant contends that the Domain Names are confusingly similar to its Trademarks. According to the Complainant it is well established that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. The Complainant refers to the WIPO case Wal-Mart Stores Inc. v. Henry Chan, WIPO Case No. D2004-0056.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. According to the Complainant, the Respondent was aware of the existence of the Trademarks at the time of the registration of the Domain Names. The Complainant has not licensed or otherwise permitted the Respondent to use its Trademarks. The Complainant contends that the “Missmisterworld” name is not generic or descriptive and is not a name which a third party would legitimately use unless it was to create a false impression of an association with the Complainant, especially with the worldwide fame and reputation of the Trademarks. According to the Complainant, it follows, therefore, that the Respondent has not used the Domain Names or any other names corresponding to the Domain Names in connection with a bona fide offering of goods and services. In addition, the Respondent is not commonly known by the Domain Names, but under “Miss & Mister Charitable Foundation” as the organization which registered the Domain Names and under the name “Miss & Mister Yearly Organised Festival-Contest of Beauty, Elegance and Harmony for Children of 3-17 years”. Furthermore, the Complainant contends that the Respondent appears to promote predominantly national beauty contests for children in Armenia and there is no international element to the contests. Therefore, there is no justification for use of the word “world” in the Domain Names.
The Complainant further contends that the Domain Names have been registered and are being used in bad faith. Based on the Trademarks and their worldwide fame and reputation and, based on the Respondent’s claimed extensive activities in the field of beauty pageants, the Complainant contends that the Respondent was well aware of the Complainant and of the Trademarks at the time of the registration of the Domain Names. The Complainant contends that Internet users attempting to find information on the Mr. World or Miss World contests organized by the Complainant would be confused when faced with the Respondent’s website, believing that the Respondent, its website and the contests promoted on the website were in some way authorized by or affiliated with the Complainant. According to the Complainant, such use of the Domain Names is detrimental to the valuable goodwill and reputation of the Trademarks.
According to the Complainant, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of its website or of the services on its website. Such false association might cause participants to enter Respondent’s events or companies to sponsor the Respondent’s events when they might otherwise participate in or sponsor the Complainant’s own beauty pageants.
Finally, the Complainant contends that the fact that the beauty contests as organized by the Respondent are not commonly known under the names “Miss World” or “Mister World” is also an indication that the Domain Names were registered and are being used in bad faith.
The Complainant requests the Panel to issue a decision that the Domain Names be transferred to the Complainant.
The Respondent contends that he was the first to register the Domain Names and that he is the rightful owner of the Domain Names. In addition, the Respondent mentions the existence of domain names such as <missworld.net>, <missworld.fr>, <misterworld.net> and <misterworld.org> which do not belong to the Complainant. The Respondent states that its organization will not organize contests named “Mr. World” and “Miss World” for contestants older than 17 years.
The Respondent contends that the Domain Names are not identical or confusingly similar to the Trademarks. The Respondent refers to a decision of the Intellectual Property Agency of the Republic of Armenia dated July 16, 2007 in which it was apparently stated that the Respondent’s trademark MISS AND MISTER WORLD JUNIOR did not infringe the Complainant’s MISS WORLD and MR WORLD trademarks. In addition, the Respondent contends that Complainant has never used the words “Miss & Mister World”.
The Respondent contends that it has rights or legitimate interests in respect of the Domain Names. The Respondent states that the Miss & Mister Charitable Foundation was founded in 1996 and that it has been the owner of “the copyright” since 1992. The Respondent states that since 1996, international broadcasting companies such as CNN have been broadcasting reports regarding Miss & Mister World contests. The Respondent states that he is also the founder of the famous international magazine Miss & Mister World.
The Respondent contends that its organization receives thousands of emails daily on the email addresses firstname.lastname@example.org, email@example.com and firstname.lastname@example.org and that the websites “www.missmisterworld.org”, “www.missmisterworld.com” and “www.missmisterworld.net” are visited by millions of visitors each year. The Respondent contends that the Miss & Mister World contest enjoys a world wide reputation and that its Domain Names are used in magazines, on posters and in mass media. Finally, the Respondent contends that its organization is a non-profit organization pursuing children charities.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that, based on the evidence provided by the Complainant, which has not been contested by the Respondent, Complainant’s trademark MISS WORLD is a well known, and possibly famous, trademark. Since the entire MISS WORLD trademark is incorporated in the Domain Names, with the interjection of the (as such non – distinctive) word “mister”, the Panel finds the Domain Names to be confusingly similar to that trademark.
The Panel notes that the addition of the word “mister” in combination with the word “world” adds to the confusing similarity of the Domain Names and the Trademarks since it is phonetically similar to Complainant’s trademark MR WORLD.
B. Rights or Legitimate Interests
The Complainant has not licensed its Trademarks to the Respondent, nor has it consented to the Respondent’s use of its Trademarks as part of the Domain Names. The Panel finds that the Respondent’s use of the Domain Names (or a corresponding name) since 2005 is not in connection with a bona fide offering of goods or services. There was and is no justification for the Respondent to use the trademarks MISS WORLD, MISTER WORLD, or the combination, for beauty contests apparently restricted (at least until very recently) to young children from Armenia.
Although the Respondent contends that the beauty contests as announced on its website “www.missmisterworld.org”, “www.missmisterworld.com”and “www.missmisterworld.net” and its international magazine Miss & Mister World are world famous, the Respondent does not provide any evidence to substantiate these claims. The Panel notes that the current websites under the Domain Names contain links to approximately 20 other national Miss & Mister contests, such as “Miss & Mister China”, “Miss & Mister United States” and “Miss & Mister Mexico”, but all of these links refer to the same website with information regarding the Respondent and do not provide any evidence that such national Miss & Mister contests have ever been organized.
Furthermore, there is no evidence (neither does the Panel find it credible) that the Respondent was commonly known by the Domain Names (or a corresponding name) before he registered the Domain Names. The Respondent contends that he has used the name Miss & Mister World since 1992 and that reports of the Miss & Mister World contests have been broadcast internationally since 1996, but does not submit any evidence thereof.
Under these circumstances, the Panel finds that the Complainant has demonstrated that the Respondent does not have a right or legitimate interest in the Domain Names.
C. Registered and Used in Bad Faith
The Respondent does not contest that he knew the Trademarks when registering the Domain Names. In view of the world wide reputation of the MISS WORLD trademark and the fact that the Respondent is apparently engaged in the beauty pageant business, (he claims to be ‘owner’ of 50 beauty contests around the world), such knowledge may also be assumed. As decided in previous WIPO UDRP decisions this is a clear indication of a bad faith registration (Caixa DŽEstalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd. WIPO Case No. D2007-0809).
The Panel finds that the Domain Names have been registered and are being used to trade off the goodwill of the Trademarks, since the Respondent, by using the Domain Names, holds itself out as organizing a global contest, whereas the beauty pageants organized by the Respondent are limited to Armenia. By using the Domain Names, the Respondent therefore intends to attract Internet users who believe the websites “www.missmisterworld.org”, “www.missmisterworld.com” and “www.missmisterworld.net” and the beauty pageant described on these websites to be connected to, or endorsed by the Complainant.
The Panel therefore finds that, by incorporating the Complainant’s Trademarks in the Domain Names, the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites, by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of its website or the products or services offered. In spite of the fact that the Respondent professes to be a “charitable foundation”, he does not contest that he is using the Domain Names for commercial gain. In this context, the Panel also notes that the Respondent does not provide evidence or even refer to one of the charities benefiting from his organization.
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 names <missmisterworld.org>, <missmisterworld.com> and <missmisterworld.net> be transferred to the Complainant.
Wolter Wefers Bettink
Dated: April 2, 2008