WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kirsty Whitaker v. Luan Kimberley Crute

Case No. DAU2019-0015

1. The Parties

The Complainant is is Kirsty Whitaker, Australia, represented by Norman Waterhouse Lawyers, Australia.

The Respondent is Luan Kimberley Crute, Australia, self-represented.

2. The Domain Names and Registrar

The disputed domain names <missmafiaaustralia.com.au>, <missmafiaboss.com.au>, <missmafiaclothing.com.au>, <missmafia.com.au> are registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2019. On June 5, 2019, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain names. On June 6 and 13, 2019, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the relevant contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”). On June 19, 20, and 21, 2019, the Center received several email communications from the Respondent.

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 13, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2019; upon request from the Respondent, the due date for Response was extended to July 7, 2019. The Response was filed with the Center on July 7, 2019. The Center received several other email communications from the Respondent on July 6, 7, 8, and 16, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 16, 2019. 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

According to the Complaint, the Complainant runs a fashion and beauty business that sells clothing, cosmetics and accessories.

According to a newspaper report submitted with the Complaint, the Complainant opened her first fashion retail outlet at the age of 19 in 2005. The name of the business was “Sugar Tease”. One of the brands carried in the store was “Miss Mafia”. The Complainant subsequently acquired the “Miss Mafia” business in January 2014. In January 2016, the Complainant incorporated Miss Mafia LLC in the United States of America. According to the Complaint, this business operates on the global market including Australia, the United States of America, Europe, and in Asia.

Amongst other things, the business operates online through <missmafia.com> and <missmafia.me>. The Wayback Machine at <archive.org> shows that an active website for the Miss Mafia LLC business was first crawled on July 9, 2016. That was for the domain name <missmafia.me>. From 2014 through to 2017, the Wayback Machine stored pages for <missmafia.com> which redirected to <hugedomains.com>, where the domain name was offered for sale. The page stored on the Wayback Machine for <missmafia.com> dated April 22, 2017 stated the website was coming soon. By September 12, 2017, the Wayback Machine stored a website for Miss Mafia LLC offering for sale the “Miss Mafia” fashion products. By this time, the domain name <missmafia.me> redirected to the website at <missmafia.com>.

Before the Complainant acquired the “Miss Mafia” business, the then owners had registered a trade mark in Australia, MISS MAFIA, on June 12, 2003 in respect of clothing and footwear in International Class 25: Trade Mark No. 957681. That registration expired on non-payment of the renewal fees and was removed from the Register on January 7, 2014. The registration of the company which had owned Trade Mark No. 957681 was cancelled on March 12, 2015.

The Complainant owns a number of registered Australian trade marks. These include trade marks registered from:

(a) February 22, 2015, Registered Trade Mark No. 1676245, MISS MAFIA, for clothing, footwear and belts in International Class 25;

(b) August 12, 2017, Registered Trade Mark No. 1865619, MISS MAFIA, for a wide range of retail, marketing and business related services in International Class 35;

(c) September 7, 2015, Registered Trade Mark No. 1719653, MISS MAFIA, for perfume and scent products in International Class 3;

(d) September 12, 2017, Registered Trade Mark No. 1872412, MISS MAFIA, for luggage and bags in International Class 18; and

(e) March 6, 2018, Registered Trade Mark No. 1911546, MISS MAFIA, for a range of paper and related products in International Class 16.

The Respondent registered the disputed domain names over a period of time as follows:

(a) on March 25, 2015, <missmafia.com.au> (the first disputed domain name);

(b) on July 4, 2017, <missmafiaaustralia.com.au> (the second disputed domain name);

(d) on September 14, 2017, <missmafiaboss.com.au> (the fourth disputed domain name).

One of the Respondent’s businesses is a graphic design and web services business. According to the page history for the Respondent’s Facebook page for this business, it has been variously known as:

(a) from January 7, 2013 to July 13, 2017 – Hell Yeah Graphics;

(b) from July 13, 2017 to August 6, 2017 – Miss Mafia Graphics;

(d) from September 27, 2017 to June 30, 2018 – Miss Mafia Australia – Graphic Design & Advertising;

(e) from June 30, 2018 to March 23, 2019 – Hell Yeah Graphics – Graphic Design, Websites & Advertising; and

(f) since March 23, 2019 – Hell Yeah Graphics.

According to the Response, the Respondent has used the following user names or “ID”s on eBay:

(a) from October 10, 2001 to May 17, 2016, “h***********n”;

(b) from May 17, 2016 to June 19, 2017, missmafiaboss; and

Historical details for the Respondent’s Australian Business Number show that it has been associated with numerous business names. These include:

(a) Hell Yeah Graphics from January 6, 2013 to August 24, 2017 and again from July 8, 2018;

(b) Miss Mafia from May 5, 2015;

(d) Miss Mafia Boss from September 28, 2017;

(e) Miss Mafia Australia Clothing from September 28, 2017 to 29 October 2018;

(f) Miss Mafia Gangster Clothing from October 3, 2017 to October 29, 2018;

(g) Miss Mafia Fashion from October 4, 2017 to September 29, 2018; and

(h) Miss Mafia Industries from October 14, 2017 to December 6, 2018.

The Respondent has made a number of unsuccessful attempts to register the terms “Miss Mafia” as a trade mark:

(a) Trade Mark Application No. 1856525, “Miss Mafia”, for a range of goods in International Class 16, which was filed on July 4, 2017 and which lapsed in the face of opposition to registration by the Complainant in February 2018;

(b) Trade Mark Application No. 1856628, “Miss Mafia Australia”, for a range of clothing and fashion design services and other graphic design services in International Class 42 and which was filed on July 5, 2017 and refused registration in January this year;

(c) Trade Mark Application No. 1866780, “Miss Mafia Clothing”, for a range of clothing and shoes in International Class 25 which was filed on September 20, 2017 and which was refused registration in January this year; and

(d) Trade Mark Application No. 1874250, “Miss Mafia Boss”, for a range of clothing and shoes in International Class 25 which was filed on September 19, 2017 and which was refused registration in March this year.

Print outs of the websites to which some of the disputed domain names resolved show that in August - September 2017:

(a) the first disputed domain name, <missmafia.com.au>, resolved to a website offering for sale clothing and other fashion items bearing designs created by the Respondent; and

(b) the second disputed domain name, <missmafiaaustralia.com.au>, resolved to a website promoting the Respondent’s graphic design and web services business.

Both the first and second disputed domain names are in “maintenance” mode and did not resolve to an active website when the Complaint was filed. According to the Complaint, the third and fourth disputed domain names resolved to a website offering clothing and other fashion items for sale, too. At the time this Decision is being prepared, they are also under “redesign” or “construction”.

The Respondent has made an application in the Magistrate’s Court at Armadale in Western Australia for a restraining order against the Complainant. The hearing of this application has been adjourned until August as the application has not been served on the Complainant. According to the Response, the Respondent is also preparing a civil action against the Complainant on undisclosed grounds. So far, lawyers for the Parties have corresponded over allegations of defamation. This proposed civil action has not been filed yet.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the 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 the Panel deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.

There are two parts to this inquiry: the Complainant must demonstrate that she has rights in a trade mark and, if so, the disputed domain names must be identical or confusingly similar to the trade mark.

The Complainant has proven that she owns registered trade marks for MISS MAFIA, referred to in section 4 above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of each disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. In undertaking this comparison, the top‑level suffixes such as “.com.au” typically may be disregarded. See e.g., auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview”), section 1.2. The test, therefore, is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Applying that approach in the present case including disregarding the top-level suffix:

(a) the first disputed domain name is identical to the Complainant’s trade mark; and

(b) each of the other disputed domain names differs from the Complainant’s trade mark only by the addition of a descriptive or geographic term. Accordingly, each of these is confusingly similar to the Complainant’s trade mark. See e.g., auDA auDRP Overview 1.0, section 1.9.

The Complainant has established the first requirement under the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(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 trade mark 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 trade mark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.

In the present case, it is not in dispute between the Parties that the Complainant has not authorised the Respondent to use any of the disputed domain names nor that the Respondent is not in any way associated with or endorsed by the Complainant.

The disputed domain names are not derived from the Respondent’s personal name. The Respondent, however, points out that she has a number of registered business names based on “Miss Mafia”.

It is not clear from the Response when the Respondent adopted the name “Miss Mafia” or, for that matter, how she arrived at the name.

On the basis of the business name registrations, it would appear that the earliest the Respondent adopted the name “Miss Mafia” was May 2015. There does not appear to have been any use of this name until 2017 although it does appear that the Respondent adopted the name “Miss Mafia Boss” for her eBay member ID in 2016. The other business names were not registered until July 2017 or later. Similarly, the trade mark applications were not made until July 2017 or later.

The Respondent appears to deny knowledge of the Complainant or the predecessor business when she adopted the first disputed domain name. However, she also says that the predecessor business only sold shoes not clothing. Further, the Respondent contends that the Complainant is really operating overseas in a different market. According to the Response, when the Respondent searched the Trade Mark Register, the only evidence returned was that the trademark of the Complainant’s predecessor’s business, Trade Mark No. 957681, had been left to expire two years previously. It is not clear when this trade mark search was undertaken. The Complaint also includes evidence that the “Contacts” page of the website to which the fourth disputed domain name resolved showed the Respondent’s premises as being located at the Complainant’s New York premises.

The starting point is that the Complainant’s Trade Mark No. 1676245 was filed on February 22, 2015 and is registered from that date in respect of clothing and related products.

Next, the fact that the Respondent has registered business names does not, of itself, establish that she has rights or legitimate interests in the disputed domain names. See e.g., auDA auDRP Overview 1.0, section 2.7B. Some corroboration of this proposition can be found in the fact that the Respondent’s trade mark applications to date have all failed.

The Respondent did not register her earliest business name, Miss Mafia, until May 2015, several months after the Complainant’s Trade Mark No. 1676245 was filed. The first disputed domain name was registered on March 25, 2015, over one month after the Complainant’s trade mark application was filed. It is not clear why a search of the trade marks register at the time of these registrations would not have disclosed at least the fact of the Complainant’s trade mark application. All the other disputed domain names and corresponding business names were not registered until July 2017 or later – that is, more than two years later.

The only evidence of use of the first, third, and fourth disputed domain names is of use in connection with the offering for sale of clothing and fashion accessories. That use appears to fall directly within the scope of the Complainant’s trade mark registrations. Use of an identical or confusingly similar domain name in connection with the offering for sale of goods covered by a complainant’s trade mark does not qualify as use in good faith under the Policy particularly in circumstances where the Respondent has attempted to register trade marks for the relevant products and those applications have been refused.

There is some evidence that the second disputed domain name was used for a period in August – September 2017 in connection with the Respondent’s graphic design / web services business. As noted above, however, on July 5, 2017 (the day after the Respondent registered the second disputed domain name) the Respondent filed Trade Mark Application No. 1856628 for “Miss Mafia Australia”, in respect of clothing and fashion design services and other graphic design services in International Class 42. That application was refused by the Trade Marks Registrar. The evidence also indicates that the Respondent’s intention was to use the disputed domain name in connection with those services. By the time the Respondent adopted this name, the Respondent had already received a letter of demand dated March 23, 2017, which put her on notice that the Complainant alleged her activities infringed the Complainant’s rights. That notice together with the clearly expressed intention through the trade mark application to trade in clothing and fashion design services does not qualify as good faith activity under the Policy.

Accordingly, on the materials before the Panel in this administrative proceeding, the Complainant has established the second requirement under the Policy.

C. Registered or Subsequently Used in Bad Faith

In contrast to the Uniform Dispute Resolution Policy (UDRP), the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. That is, these requirements are disjunctive, not conjunctive as under the UDRP.

The use of the first, third, and fourth disputed domain name to resolve to a website offering for sale goods falling within the scope of the Complainant’s registered trade marks qualifies as use in bad faith under the Policy.

As the Respondent’s failed Trade Mark Application No. 1856628 for “Miss Mafia Australia” was filed on the day after the second disputed domain name was registered, the Panel infers that the Respondent registered the second disputed domain name to provide the services specified in that application. As the rejection of that application appears to show, those clothing and fashion design services are too closely aligned to the goods and services protected by the Complainant’s trade marks. Accordingly, it qualifies as registration in bad faith under the Policy.

The Complainant has established all three requirements under the Policy in respect of all disputed domain names.

6. Decision

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 <missmafiaaustralia.com.au>, <missmafiaboss.com.au>, <missmafiaclothing.com.au>, and <missmafia.com.au> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: July 30, 2019