The Complainant is Miss World Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Marks & Clerk Solicitors, United Kingdom.
The Respondent is Carilee Rolle of Fort Lauderdale, Florida, United States of America.
The disputed domain name <missteenworldintl.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2009.
On May 28, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On June 1, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the registrant;
(c) the contact details given for the Respondent in the Complaint are correct; and
(d) the language of the registration agreement is English.
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”).
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 June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 26, 2009.
The Center appointed Warwick A. Rothnie, Charters Macdonald-Brown and Steven Fox as panelists in this matter on July 29, 2009. The Panel finds that it was properly constituted. Each member of 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 Complainant operates the “Miss World” beauty and talent contest which has been staged annually since 1951.
The Respondent registered the disputed domain name in May 2006.
When the Complaint was filed the disputed domain name resolved to a website for a beauty pageant under the banner “Miss Teen World International” “Teens With a Purpose”. At the time of writing this decision, the banner and some other elements of the website had been changed to refer to “Miss Global Teen International”.
Although no Response has been received, the Centre has ensured that copies of the Complaint have been served on the Respondent by email, facsimile and courier at the addresses which the Registrar has confirmed are correct. Clause 18 of the registration agreement (a copy of which is included in Annex 3 to the Complaint), requires the Respondent promptly to correct and update her contact information.
The Panel also notes that the website which the disputed domain name:
(a) resolved to in the form included in Annex 15 to the Complaint; and
(b) currently resolves to,
lists the same physical and email addresses used by the Center to effect service of the Complaint.
The Panel finds therefore that the Complaint has been duly served on the Respondent and she has been afforded a fair opportunity within the Policy and the Rules to present her case.
In these circumstances, paragraph 5(e) of the Rules requires the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the complaint. This is not a simple rubber-stamping, however, as paragraph 15(a) of the Rules requires the panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Accordingly, under paragraph 4(a) of the Policy, the complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The 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.
There are two parts to this inquiry: The Complainant must demonstrate that it has trademark rights in a sign and, if so, the disputed domain name must be shown to be identical or confusingly similar to those trademark rights.
The Complainant claims to have some 204 registrations for the trademark MISS WORLD” in some 115 countries. A list is included in Annex 11 to the Complaint. Further, details of some of the registrations in the United States of America, the United Kingdom and The Bahamas, amongst others, are included in Annex 12. The registrations in the United States of America date from 1969, The Bahamas from 1972 and the Community Trade Mark (“CTM”) from 1996.
The Complainant also has a registration for the trademark MISS TEEN INTERNATIONAL, at least as a CTM dating from 2001.
In addition to its trademark registrations, the Complainant relies on its accrued common law rights. According to the Complaint, the designation “Miss World” has been in use for beauty pageants since 1951. From 1951 to 1979, the MISS WORLD trademark was used, and the competition was operated, by Mecca Limited. Since 1979, the competition has been operated by the Complainant and its affiliates following assignment from Mecca Limited.
National beauty contests for the Miss World competition are run in some 120 countries and receive over one million entries each year. Contestants from the United States of America have entered into the Complainant's competition every year since 1951. Contestants from The Bahamas have been entered every year since 1966.
According to the Complaint, television broadcasts of the Miss World final attracted more than one billion viewers in the 1980s. In each of the last three years, the television audience has been calculated in excess of two billion viewers.
The Complainant has also promoted its competition through a website since 2000, initially via “www.missworld.tv” and subsequently “www.missworld.com”. The website attracts on average 100,000 unique visitors each month, rising to 300,000 unique visitors per month during the final.
As a result, the Panel finds that the Complainant's designation “Miss World” has clearly acquired a secondary meaning as the badge of origin of the Complainant's services and is well-known in many parts of the world.
Accordingly, the Panel finds that the Complainant has established registered trademark rights in both MISS WORLD and MISS TEEN WORLD and, in addition, common law rights in at least MISS WORLD.
The second part of this inquiry requires a comparison between the proved trademark rights and the disputed domain name. On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002 0420.
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Complainant's proved trademarks. The disputed domain name differs from MISS TEEN WORLD only by the addition of “intl” and the gTLD “.com”. It is well established that the latter can be disregarded as a purely functional requirement of the Internet. The Panel considers that many users of the Internet would interpret “intl” as a contraction for “international”. The addition of that contraction, whether with or without the gTLD would readily suggest to notional users of the Internet familiar with the Complainant's MISS TEEN WORLD trademark a likelihood of association. This is also the case with the Complainant's MISS WORLD trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's proved trademarks, MISS WORLD and MISS TEEN WORLD.
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
The Complainant states that it has not authorized the Respondent to use the disputed domain name and denies that the Respondent is in any way associated with the Complainant's competition.
The Panel further notes that use of the disputed domain name in connection with the services provided by the Respondent, or those affiliated with her, appears to conflict directly with the Complainant's proved and very longstanding trademark rights, amongst other places, in both the United States of America (where the Respondent, from the WhoIs details associated with the disputed domain name, appears to be located and operating) and the Bahamas (where the finals are held for the competition operated from the website to which the disputed domain name resolves). This would also be the case in many (if not all) of the very large number of other countries in which the Complainant has trademark rights.
Noting that the competition being operated from the website to which the disputed domain name resolves purported to be operated by “Miss Teen World International Inc”, the Complainant contends that the second example given in paragraph 4(c) of the Policy cannot apply because the name is not the Respondent's own name. The Complainant also provides some evidence that no company appears to be incorporated in Florida under that name.
It is not necessary for the Panel to determine in this case whether or not a company does in fact exist under the name “Miss Teen World International Inc”.
First, as the Complainant contends, the obligations under the Policy cannot be sidestepped by the simple expedient of incorporating a company which adopts a name confusingly similar to another person's trademark rights, particularly where the name is used in a related or competing field to that other person's trademarks.
Secondly, although the disputed domain name was registered before the Complainant challenged the Respondent about the domain name, the Panel concludes, for the reasons discussed below in connection with the third requirement under the Policy, that the Respondent and those affiliated with her were well aware of the Complainant's rights and reputation well before the disputed domain name was registered and, it would seem, long before the Respondent or those affiliated with her entered the industry.
In these circumstances, the Panel finds that the Complainant has raised a compelling prima facie case that the Respondent does not have rights or legitimate interests in the domain name. As the Complainant charges, the Respondent would appear to have registered the domain name in an effort to take advantage of the goodwill and reputation associated with the Complainant's trademark rights. The Respondent has not sought to rebut that conclusion with any justification or explanation. Rather, the Respondent, or those affiliated with her, would appear to have changed the name by which their competition is conducted, and the entity which is conducting it, from “Miss Teen World International” to “Miss Global Teen International”.
Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.
As recounted above, the Complainant's competition has been operating since 1951. Its registered trademarks date back over a very long period including to 1969 in the United States of America and 1972 in The Bahamas. Its competition had achieved a global reach with an audience in excess of one billion television viewers by the 1980s. The exposure of the Complainant's trademark MISS WORLD has only increased since then.
The disputed domain name was registered only in May 2006.
The fame and significance of the Complainant's trademark MISS WORLD would appear to have been well-known to the Respondent and those affiliated with her when the disputed domain name was registered. The designation “Miss World” had well and truly acquired secondary meaning as denoting the Complainant's competition by then. In addition, the website to which the disputed domain name resolves proclaims that:
“our organizers have over 15 years of combined pageantry and fashion experiences. Having served as pageant producers in the Bahamas and national directors to Miss Universe, Miss Earth, Ford Super Model and many other international pageant and model franchises ….”
Thus, it seems highly unlikely that the Respondent or those affiliated with her adopted the disputed domain name without knowledge of the Complainant's competition and the potential for deception. Moreover, the disputed domain name is being used in connection with a competition that is not authorized by the Complainant in circumstances where many people are likely to think, mistakenly, that there is some association or relationship with the Complainant. This potential for deception is reinforced by the fact that, while the Complainant promotes its competition by reference to the strapline “Beauty with a Purpose”, the competition promoted from the website to which the disputed domain name resolves features the strapline “Teens with a Purpose”.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <missteenworldintl.com> be transferred to the Complainant.
Warwick A. Rothnie
Dated: August 13, 2009