WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miss Universe L.P., LLLP v. Web Enterprises Inc.
Case No. D2014-2084
1. The Parties
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.
Respondent is Web Enterprises Inc. of Walnut, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <missuniverso.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on November 26, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 Respondent of the Complaint, and the proceeding commenced on December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 31, 2014.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 13, 2015. 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
Complainant is the owner of 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 where women from over eighty countries compete for the title “Miss Universe”. For over sixty years, Complainant and its predecessors have used the MISS UNIVERSE trademark in connection with the international MISS UNIVERSE pageant held in many countries around the world, including in Spanish-speaking countries. Contestants from Spanish-speaking countries are consistently selected as finalists in the international MISS UNIVERSE pageant each year.
Complainant owns trademark registrations for the marks MISS UNIVERSE, MISS UNIVERSO and variant marks in over 100 countries for use in connection with organizing and promotion of beauty contests and related goods and services. These registrations include, for the mark MISS UNIVERSO, Chilean Registration No. 1,094,041, Colombian Registration No. 302678, Dominican Republic Registration No. 166114, Ecuador Registration No. 9927-0404, Italian Registration No. 1186757, Mexican Registration No. 865293, Paraguayan Registration No. 331423 and Peruvian Registration No. 42142, Venezuelan Registration No. S026852, some registered as early as 1969, and United States Registration No. 1,597,876 for the mark MISS UNIVERSE, registered in 1990.
Complainant licenses the use of the MISS UNIVERSE and/or MISS UNIVERSO marks for the production of pageants in approximately eighty countries and territories worldwide each year. Complainant operates a number of websites, including at “www.missuniverse.com” and broadcasts the international Miss Universe pageant worldwide via the same website.
The disputed domain name <missuniverso.com> was registered on March 5, 1999. On July 8, 2014, the disputed domain name resolved to a placeholder webpage displaying the message “WEBPAGE UNDER CONSTRUCTION COME BACK SOON”.
On July 8, 2014 and August 5, 2014, Complainant sent cease and desist letters to Respondent notifying Respondent of Complainant’s trademark rights and demanding assignment of all rights in the disputed domain name to Complainant. Despite receiving confirmation that the letters were delivered, Complainant did not receive any response to its letters.
At the time of filing the Complaint, the disputed domain name was still registered to Respondent and returned a message that “The webpage is not available”.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical and confusingly similar to Complainant’s MISS UNIVERSO and MISS UNIVERSE marks, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complainant to succeed, Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademarks MISS UNIVERSE and MISS UNIVERSO which predate the registration of the disputed domain name by several decades.
The disputed domain name incorporates Complainant’s mark MISS UNIVERSO in its entirety, and is confusingly similar to Complainant’s MISS UNIVERSE mark. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227. The addition of the Top-Level Domain “.com” is non-distinctive because it is required for the registration of a domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the disputed domain name is identical and confusingly similar to Complainant’s trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,supra).
Respondent’s business as shown on the website “www.webenterprises.net” appears to be the development and design of websites, and therefore bears no legitimate relationship to the use of the disputed domain name which is naturally identified with pageants due to the association with Complainant’s trademarks. The disputed domain name does not resolve to an active site. Customers of Complainant are likely to be confused and frustrated in their efforts to reach Complainant’s website. Respondent’s inactive use of the disputed domain name evidences an aim at preventing the trademark owner from using its own well-known mark MISS UNIVERSO in a corresponding domain name.
Respondent has filed no response. There have been no other communications from Respondent in connection with this case. Without a response, there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the disputed domain name. The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the mark MISS UNIVERSO. The Panel also finds that there is no evidence that Respondent is engaged in a bona fide offering of goods or services, Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.
Thus, the Panel finds that Complainant has successfully presented an unrebutted prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
The evidence submitted by Complainant sufficiently shows that the MISS UNIVERSE and MISS UNIVERSO trademarks are well-known worldwide (as also found by the panelists in e.g., Miss Universe L.P., LLP v. Oliya Productions, WIPO Case No. D2002-0765; Miss Universe L.P., LLLP v. Sheeler LLC. / WhoisGuard Protected, WIPO Case No. D2010-1653; Miss Universe L.P., LLLP v. Andre Miron, WIPO Case No. D2013-0628). The record also shows that Complainant owns trademark rights in MISS UNIVERSE and MISS UNIVERSO that pre-date by several decades the registration of the disputed domain name, which contains Complainant’s trademark in its entirety. Given the international recognition of Complainant’s trademarks, the Panel finds that Respondent was likely aware of or should have known of Complainant’s rights in the trademark MISS UNIVERSO when registering the disputed domain name, and the registration therefore constituted bad faith (e.g., Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte, WIPO Case No. D2010-0456; Swarovski Aktiengesellschaft v. huang dougong, WIPO Case No. D2013-1605; and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc. / ning ning, WIPO Case No. D2012-0979); Miss Universe L.P., LLP v. Oliya Productions, supra; Miss Universe L.P., LLP v. Miss Pennsylvania Inc., WIPO Case No. D2001-1296.
Respondent’s bad faith is also evidenced by its failure to respond to repeated communications from Complainant objecting to the disputed domain name. See, e.g., Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.
Therefore, the Panel finds the disputed domain name was both registered and used in bad faith, and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <missuniverso.com> be transferred to Complainant
Lynda J. Zadra-Symes
Date: January 27, 2015