WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miss Universe L.P., LLLP v. Andre Miron
Case No. D2013-0628
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 Respondent is Andre Miron of Longueuil, Quebec, Canada. So far as the Panel can determine, the Respondent represents himself.
2. The Domain Name and Registrar
The disputed domain name <missuniverscanada.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013.
Following service of the Complaint by the Center, email correspondence was received on April 23, 2013, from one of the email contact addresses provided for the Respondent. This correspondence requested that documentation in French be provided. There was then an exchange of email communications in French between the Center and the Respondent, and on April 23, 2013, the Center informed the Respondent (in English) that the language of the registration agreement was English and this was therefore the language of the proceedings, subject to any final determination by the Panel.
On May 1, 2013, the Respondent filed what is in substance a Response, describing it as a “contestation of case no d2013-0628”. That document was in English.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 13, 2013. 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
There appears to be no dispute about the relevant facts which can be summarized as follows.
These proceedings are between two parties who organize what are referred to as beauty pageants where female participants compete to be judged on their appearance. The Complainant or its predecessors in title have for many years organized what is known as the “Miss Universe” beauty pageant which involves competitors from over eighty countries and which is broadcast live to a very large television audience. Entrants to this pageant are winners of a national “Miss Universe” heat which is held in their local country and where the winner will be awarded the title of Miss Universe [Country Name] or Miss [Country Name] Universe. In Canada, the Complainant, through its licensee, uses and has used the mark MISS UNIVERSE CANADA for many years to identify its National pageant in Canada and the titleholder who represents Canada in the international MISS UNIVERSE pageant. The Complainant’s business generates substantial advertising and sponsorship revenues.
The Complainant owns many registered trademarks throughout the world for MISS UNIVERSE and also for those words in association with a country name. For example in Canada it owns registered trademarks for MISS UNIVERSE and MISS UNIVERSE CANADA, registered in respect of beauty pageants and related goods (registration numbers 392970, 555200 and 7417163).
The Respondent organizes beauty pageant in Canada under the names of “Miss Canada” and “Miss Teen Canada” and has registered trademarks in Canada in respect of those terms. He promotes his business via a web site located at “www.misscanadatm.com”.
The Respondent admits he registered the Disputed Domain Name on December 3, 2008, but says he does not use it. However he admits that at one stage the Disputed Domain Name was redirected to his own web site at “www.misscanadatm.com”. He says this was “inadvertent” and the result of a mistake by a programmer.
5. Parties’ Contentions
The Complainant’s contentions are straightforward. These contentions can be summarized as follows:
The Disputed Domain Name is confusingly similar to its trade mark MISS UNIVERSE and MISS UNIVERSE CANADA in which it clearly has rights.
The Complainant says that the Respondent’s selection of the Disputed Domain Name, cannot be a coincidence as MISS UNIVERSE is not a descriptive or generic term; it is a famous and well known trademark particularly in the field if beauty pageants which is the field the Respondent carries on business in.
The Complainant says the Respondent has no rights or legitimate interests in the term “Miss Universe” or “Miss Universe Canada”. It says there is no other meaning associated with “Miss Universe” other than in relation to the Complainant’s business. By registering a domain name that is virtually identical to the Complainant’s famous marks and using the Disputed Domain Name as a web address for its website which promotes its own beauty pageants, the Respondent’s sole intention was to benefit financially from, and unlawfully trade upon the renown associated with the Complainant’s trademarks. Given the fame of the Complainant’s marks, and the Respondent’s decision to register and use the Disputed Domain Name to promote its competing pageant services, it is clear Respondent was well aware of the Complainant’s rights in the MISS UNIVERSE and MISS UNIVERSE CANADA marks.
The Complainant says the Respondent must have been aware of the Complainant’s rights in the MISS UNIVERSE and MISS UNIVERSE CANADA marks when registering the Disputed Domain Name. Given the fame and long-standing use of the Complainant’s MISS UNIVERSE and MISS UNIVERSE CANADA marks, and the fact that the Respondent is in the pageant business, the Respondent’s knowledge of the Complainant’s rights can be inferred. In this regard the Complainant relies upon previous UDRP cases such as , Miss Universe L.P., LLLP v. Oliya Productions, WIPO Case No. D2002-0765 (ordering transfer of MISS-UNIVERSE.ORG domain name to complainant); and Miss Universe L.P., LLLP v. Miss Pennsylvania Inc., WIPO Case No. D2001-1296 (ordering transfer of MISSPENNSYLVANIAUSA.COM domain name to complainant).
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith.
The Respondent says that he organizes beauty pageants under the “Miss Canada” and “Miss Teen Canada” names and promotes these through its websites at “www.misscanadatm.com”. He says he is entitled to do so. He also says there are no trademarks in Canada for Miss Universe Canada. He admits that he registered the Disputed Domain Name, but says he does not use it. He also admits that at one stage the Disputed Domain Name pointed at the Respondent’s website but says this was the result of an error by a programmer.
6. Discussion and Findings
As a preliminary matter, given the Respondent filed a Response in English, the Panel accordingly confirms the language of these proceedings is English.
A. Identical or Confusingly Similar
The Panel notes that the Complainant’s Canadian registered trademark for MISS UNIVERSE CANADA was registered on the June 10, 2009, which is after the date the Disputed Domain Name was registered, although the application for this trademark was filed before the date the Disputed Domain Name was registered. This appears to be a point relied upon by the Respondent. However, it is not necessary to consider this issue further as the Disputed Domain Name <missuniverscanada.com> is in the Panel’s view in any event confusingly similar to the Complainant’s registered trade mark for MISS UNIVERSE, which clearly predates the registration of the Disputed Domain Name. For example, this trade mark was registered in Canada in 2001. The only substantive differences are (i) the omission of the letter “e” which does not render the Disputed Domain Name dissimilar or remove any confusion and (ii) the addition of the geographic identifier “Canada”. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
“Miss Universe” is a term which the evidence establishes is widely known and associated with the Complainant’s business. In the field of beauty pageants it appears to relate exclusively to the Complainant and its business.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MISS UNIVERSE trade mark. The Complainant has prior rights in the MISS UNIVERSE trade mark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In the present case, the Panel concludes that the Respondent selected the Disputed Domain Name precisely because of its association with the Complainant. It seems inconceivable to the Panel that the Respondent, who carries on business in the same field of activity, was not well aware of the Complainant and its reputation when he registered the Disputed Domain Name. In this case, although the Respondent has filed a Response and admitted registering the Disputed Domain Name, he has remained silent on why he chose that name or what his intention was. He has not sought to advance any case that he had a legitimate right or interest to do so and the Panel infers that none exists.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Respondent has not provided any explanation of what his purpose was in registering the Disputed Domain Name. Nor has he given any proper explanation of how or why it was that the Disputed Domain Name was redirected to point at the Respondent’s web site, other than to say that this was “inadvertent” and a “mistake by a programmer”. This is not a satisfactory explanation. The evidenced establishes this redirection continued for many years and after complaints had been made to the Respondent by the Complainant. The Panel finds it difficult to conceive of any legitimate use the Respondent could have for the Disputed Domain Name and infers, in the absence of any proper explanation from the Respondent, that this was part of a plan that would redirect Internet users searching for a website with details of the Complainant’s Canadian beauty pageant to the Respondent’s website promoting his alternative Canadian beauty pageants. In the Panel’s view this falls squarely within paragraph 4b (iv) of the Policy:
“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.”
This is evidence of registration and use in bad faith. Further, the Panel notes that the Respondent in his Response has not provided any explanation of why it was that he registered the Disputed Domain Name or any legitimate use he might have had for it. The Panel infers that none exists.
In reaching this conclusion the Panel notes that it is in substance deciding that the Respondent’s case that the redirection occurred as a result of a “mistake” by “a programmer” lacks credibility. The Panel is mindful that care should be taken in reaching such a conclusion in the context of summary proceedings under the UDRP. However, the Panel respectfully agrees with the three person panel who considered this issue in Share Our Gifts Foundation, Inc. v. Freedom Bands Inc., Fan Bandz Inc a/k/a fanbanz, WIPO Case No. D2004-1070, and who unanimously concluded as follows:
“While there will certainly be cases in which a Panel cannot determine credibility, it would serve neither the interests of the parties nor the integrity of the process to dismiss any case in which one of the parties submits evidence which creates a colorable issue of credibility, leaving the parties to expensive and prolonged court proceedings.
Moreover the Panel is directed by the Rules that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Rules, paragraph 10(d). Such a task implicitly includes the evaluation of the credibility of the evidence. Therefore, the Panel undertakes its duty to assess and to weigh the evidence submitted.”
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <missuniverscanada.com> be transferred to the Complainant.
Nick J. Gardner
Date: May 27, 2013