WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miss Universe L.P., LLLP v. Sheeler LLC. / WhoisGuard Protected
Case No. D2010-1653
1. The Parties
The Complainant is Miss Universe L.P., LLLP of New York, New York, United States of America represented by Kelley Drye & Warren, LLP, United States of America.
The Respondents are Sheeler LLC. of Glenside, New Zealand; WhoisGuard Protected of Westchester, California, United States of America (hereafter the Respondent).
2. The Domain Name and Registrar
The disputed domain name <missuniversesexvideo.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On October 1, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 2, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 5, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 8, 2010.
The Center verified that the Complaint together with the amended 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 October 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2010.
The Center appointed Jon Lang as the sole panelist in this matter on November 5, 2010. 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.
4. Factual Background
For over fifty years, Miss Universe and its predecessors-in-interest have used the MISS UNIVERSE mark in the United States and throughout the world in connection with the promotion and production of an annual international beauty pageant.
The Complainant is the owner of rights in and to the well-known MISS UNIVERSE mark registered in the United States Patent and Trademark Office (e.g., Reg. No. 1,597,876). The Complainant also owns registrations for the MISS UNIVERSE mark in over 80 countries worldwide. The Complainant has established a valuable reputation and achieved enormous goodwill in the mark. The Complainant has earned considerable revenue from sponsorships and licenses of the MISS UNIVERSE mark, broadcast rights for the pageant, ticket and program sales, etc. The Complainant’s MISS UNIVERSE mark is exclusively associated with the Complainant and its goods and services.
The Complainant has an active presence on the Internet, operating a number of websites including at “www.missuniverse.com”, a site devoted to the promotion of the Complainant’s goods and services. Indeed, the Complainant’s website has become a valuable tool in promoting its goods and services.
The domain name in dispute, <missuniversesexvideo.com> (the Domain Name), was registered on November 18, 2009, by the Respondent. The website associated with the Domain Name displays hard core pornographic material.
Most if not all of the Complainant’s trademark registrations precede the date of registration of the Domain Name.
Not much is known about the Respondent who has not participated in these proceedings.
5. Parties’ Contentions
The contentions made by the Complainant are summarised below:
The Domain Name is Confusingly Similar to a Trademark in which the Complainant Has Rights;
The Complainant has extensive, exclusive rights in the well-known trademark MISS UNIVERSE.
The Domain Name registered and used by the Respondent is confusingly similar to the well-known and distinctive MISS UNIVERSE mark. It incorporates the entirety of the Complainant’s MISS UNIVERSE mark and only adds the generic terms “sexvideo” and “.com.”
While consumers may not necessarily believe that the Complainant is associated with the Domain Name and its website, it must still be considered “confusingly similar” as it is clear that the Respondent selected the Domain Name with the Complainant very much in mind.
The Respondent Has No Rights or Legitimate Interests in the Domain Name
The Domain Name is not the trade name or company name of the Respondent. The Respondent is not commonly known by that name which bears no legitimate relationship to the business of the Respondent. The Respondent is not licensee nor is it authorised to use the Complainant’s mark.
By registering a domain name that incorporates the entirety of the Complainant’s mark, the Respondent’s sole intention was to benefit financially from the renown associated with the Complainant’s mark by misleadingly diverting consumers and tarnishing the mark. The website associated with the Domain Name contains hard core pornographic material, and falsely claims that the participants are contestants of the MISS UNIVERSE pageant.
The Domain Name Was Registered and Is Being Used in Bad Faith
The Complainant’s MISS UNIVERSE mark has a strong reputation and is widely known and well recognized in the United States and throughout the world.
The Respondent must have been aware of the Complainant’s rights in the MISS UNIVERSE
mark when registering the Domain Name, particularly as the website associated with it makes false allegations regarding “Miss Universe Contestants”.
By including the entirety of the Complainant’s mark in the Domain Name and using the mark to promote its pornographic services and content, the Respondent clearly intended to attract Internet users and capitalize on the goodwill of the Complainant's famous mark for its own commercial gain, which constitutes bad faith.
Furthermore, by associating the Complainant’s mark with its pornographic website, the Respondent is tarnishing the Complainant’s MISS UNIVERSE mark. The Respondent is creating a negative association with the Complainant and damaging its public reputation.
The Respondent’s bad faith is also evidenced by its failure to respond to repeated communications from the Complainant concerning the alleged trademark infringement, and the Complainant makes a number of points in this regard.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Complainant has shown evidence of its rights in the trademark MISS UNIVERSE. The suffix ‘.com’ being irrelevant for comparison purposes, the issue is whether the addition of the words ‘sexvideo’ immediately after ‘missuniverse’ is sufficient to render the Domain Name not confusingly similar to the trademark, MISS UNIVERSE, in which the Complainant has rights.
The addition of similar generic words to distinctive marks is not a new phenomenon, and similar cases have been considered on several occasions by WIPO panels. The following extract from Credit Suisse Group v.Freddy Iseli, WIPO Case No. D2008-1769 would appear to summarise the approach taken in these types of cases:
“The Panel is satisfied that the Disputed Domain Name is confusingly similar to the ORANGE mark. Previous Panels have decided that the addition of a generic term such as the word “porno” to a trade mark is likely to result in confusion. See Microsoft Corporation v. S.L. Mediaweb, WIPO Case No. D2003-0538, (decided that <msnporno.com> is confusingly similar to the mark MICROSOFT); Academy of Motion Picture Arts and Sciences v. Chego Nado, WIPO Case No. D2003-0541, (decided that <porno-oscar.com> is confusingly similar to the mark OSCAR); Caesars World v. Alaiksei Yahorau, WIPO Case No. D2004-0513, (decided that <porncaesar.com> is confusingly similar to the mark CAESARS); Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000–0102, (decided that <nokiagirls.com> is confusingly similar to the mark NOKIA).
The Panel considers that the Disputed Domain Name is confusingly similar to the Complainant's mark for the purposes of paragraph 4(a)(i) of the Policy.”
Following the approach adopted in the above case, this Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant must make out at least a prima facie case that the Respondent lacks rights or a legitimate interest in the Domain Name. Once made out, the burden to show rights or legitimate interests shifts to the Respondent who must demonstrate that it does have rights or legitimate interests. The Respondent can do this in various ways.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that can be advanced by the Respondent, which if found proved, can demonstrate that the Respondent do indeed have rights or legitimate interests in the Domain Name. Thus, if it can be shown that the Respondent has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services prior to the dispute, or can show that it has been commonly known by the Domain Name or that it is making legitimate noncommercial or fair use of the Domain Name without intent to divert consumers or to tarnish the trademark, then the Respondent may well be able to satisfy the Panel that it has rights or legitimate interests for the purposes of the Policy.
In this case, the Complainant has made out a prima facie case that the Respondent lacks rights or a legitimate interest in the Domain Name. The Respondent is not known by the Domain Name, and the Complainant has not authorised the Respondent to use its mark, whether in the Domain Name or otherwise. The Respondent has failed to file a Response to the Complaint and has thus offered up no justification for its choice and use of the Domain Name. For the sake of completeness however, this Panel asks, rhetorically, is it likely that the Respondent, in all the circumstances, could make out rights to or legitimate interests in the Domain Name.
Given the manner of use of the Domain Name and content of the site to which it resolves, there can be little doubt that the Respondent knew of the Complainant and its MISS UNIVERSE mark prior to registration of the Domain Name. Further, it appears likely to the Panel that the Respondent deliberately chose the Domain Name for the purposes of attracting website traffic to its pornographic site. Adult sex sites which are not illegal may constitute a bona fide offering of goods and services. However, in circumstances where a respondent has deliberately chosen a domain name confusingly similar to a well-known mark, where false claims are made on a web site to which the domain name resolves which may well have the effect of tarnishing the reputation of a complainant, and where no explanations have been forthcoming from a respondent, a panel is entitled to conclude that there is no bona fide (or fair) use of a domain name and that therefore the respondent lacks rights or legitimate interests. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, there may be evidence of bad faith where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website 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 the website or of a product or service on the website.
In the decision in Credit Suisse Group v. Freddy Iseli, WIPO Case No. D2002-0794, it was said:
“It has been held that actual or constructive knowledge of the [c]omplainant’s rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). It is obvious from the facts in issue that the [r]espondent had actual knowledge of such rights.
Previous cases have also established that the deliberate choice and registration of a famous mark as [the] domain names suggest (sic), in the absence of an explanation from the [r]espondent, that the registrations were made in bad faith.”
It seems clear that the Respondent knew of the Complainant’s mark prior to their relatively recent registration. The mark is very well-known and it is difficult, if not impossible, to conceive of any legitimate explanation for the choice of the Domain Name in the circumstances of this Complaint. It is difficult to arrive at a conclusion other than that the confusingly similar Domain Name has been registered to take unfair advantage of the Complainant’s rights. The purpose of registration appears to be to attract Internet users to the Respondent’s website in circumstances where the Complainant may suffer some real detriment in terms of reputational damage and the tarnishing of its trademark given the pornographic nature of the Respondent’s site. Several decisions under the Policy have held that use of another’s mark in a domain name for a pornographic website is an indication of bad faith, and in the circumstances of this Complaint, this Panel finds, for the purposes of the Policy, that the Domain Name was registered and 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 <missuniversesexvideo.com> be transferred to the Complainant.
Dated: November 15, 2010