WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Norma Kristie, Inc. v. Kevin Neaves
Case No. D2004-0196
1. The Parties
The Complainant is Norma Kristie, Inc., of Little Rock, Arkansas, United States of America.
The Respondent is Kevin Neaves, of Bryn Mawr, Pennsylvania, United States of America.
2. The Domain Names and Registrars
The disputed domain names are , and (collectively, the "Domain Names"). The domain names and are registered with Network Solutions, Inc. and the domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2004. On March 16, 2004, the Center transmitted by email to Go Daddy Software and Network Solutions, Inc. a request for registrar verification in connection with the Domain Names. On March 16, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of and providing the contact details for the administrative, billing, and technical contact. On March 19, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of and and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 March 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for a Response was April 11, 2004. The Response was filed with the Center on April 11, 2004.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 26, 2004. 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
The Complainant is engaged in the business of providing entertainment services and focuses primarily on the presentation of beauty pageants. The Complainant markets and provides its services under the name and mark MISS GAY AMERICA PAGEANT.
According to Go Daddy Software and Network Solutions, Inc., the Respondent is the registered owner of the Domain Names.
5. Parties' Contentions
A. Complainant
The Complainant is engaged in the business of providing entertainment services and focuses primarily on the presentation of beauty pageants. The Complainant has used the mark MISS GAY AMERICA PAGEANT in connection with its business since June 25, 1975. The mark MISS GAY AMERICA PAGEANT has been federally registered since February 3, 1998, and is an incontestable mark.
The domain name was registered by Richard Meador for the benefit of the Complainant pursuant to a franchise agreement between the Complainant and Mr. Meador. In accordance with the franchise agreement, Mr. Meador designed the website connected to the domain name for the Complainant and ran the website on a day-to-day basis. During the summer of 1999, Mr. Meador informed the Complainant that he could not longer administer the website and the Complainant obtained another programmer to administer it.
Unbeknownst to the Complainant, when Mr. Meador registered the Domain Names, he did so in his personal name and not in the Complainant's name. When a personal feud occurred between the Complainant's president and Mr. Meador, Mr. Meador transferred the Domain Names to the Respondent, a friend of Mr. Meador, in breach of his fiduciary duties to the Complainant. The Respondent knew that the Complainant had trademark rights in the Domain Names and was using them in connection with its business, and therefore should have known that the transfer was fraudulent. Further, the Respondent would have known of the Complainant's rights in its mark and the Domain Names had he consulted the federal register.
The Complainant operated the Domain Names and used them to advertise and sell videos of pageants produced by the Complainant for many years prior to the transfer of the Domain Names to the Respondent. The Complainant paid for the registration of the Domain Names and their upkeep until the time of transfer. In fact, the Complainant is still paying the website hosting provider to host the website previously connected to the Domain Names.
The mark MISS GAY AMERICA PAGEANT is identical to the Domain Names except for the term "pageant". In addition, actual confusion has occurred. The Complainant's shipping invoices have listed the Complainant's domain name as for several years, yet when an Internet user enters that name in a browser, he or she is misdirected to the Respondent's website "" instead of the Complainant's website.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent has not been commonly known by any of the Domain Names and is not a licensee or otherwise authorized by the Complainant to use its mark. The Respondent's use of the Domain Names is merely a means to redirect those seeking the Complainant's services to the Respondent's website, and, except for wrongfully diverting the Complainant's customers, the Respondent has no use for the Domain Names. Further, the Respondent is wrongfully displaying the Complainant's common law design mark on his website, which clearly indicates an intent to divert potential customers from the Complainant.
Even if the Panel finds that the Respondent does not intend to capitalize on the goodwill of the Complainant, the Respondent's possession of multiple similar domain names prevents the Complainant from acquiring a domain name incorporating its trademark and thus interferes with the Complainant's rights in the mark.
B. Respondent
The Respondent purchased the Domain Names from an individual with whom the Complainant admits it was associated. Even if the Complainant had rights in the Domain Names, it could have alienated those rights to the Respondent. The salient question is therefore whether the sale of the Domain Names was authorized by a legitimate agent of the Complainant. As such, this case is essentially a breach of contract and breach of fiduciary dispute, which is not appropriate for this forum.
Notwithstanding the Respondent's objections to forum, the Respondent disputes the Complainant's accusations in the Complaint. The Respondent concedes that the Domain Names are similar to a mark in which the Complainant has rights. However, the Respondent contends that he is making a legitimate non-commercial use of the Domain Names without intent for commercial gain, to divert the Complainant's customers or to tarnish the Complainant's mark. The website connected to the Domain Names is a non-commercial website serving as a forum for those interested in general discussion and news concerning female impersonation pageantry. The website creates a common forum of people with a similar interest and thus may actually benefit the Complainant by generating interest in the Complainant's business. In essence, the Respondent is providing a public service for those in a particular industry, free of charge.
The Respondent did not register or acquire the Domain Names for the purpose of selling them to a competitor of the Complainant or to disrupt the Complainant's business, and the Complainant and the Respondent are not competitors. The Respondent is instead using the Domain Names for his not-for-profit, informational website.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant's mark MISS GAY AMERICA PAGEANT is a federally registered service mark in the United States and has been in continuous use for twenty-eight years. The Panel finds that the mark is protected by federal and common law.
The second-level domain of the Domain Names is identical to the Complainant's mark except for the word "pageant". In addition, the Respondent has conceded that the Domain Names are similar to the Complainant's mark. The Panel therefore finds that the Domain Names are confusingly similar to the Complainant's mark.
B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant or otherwise authorized to use the Domain Names and there is no evidence that the Respondent is commonly known by any of the Domain Names.
The Respondent's current use of the Domain Names is to create a forum for persons who are interested in female impersonation pageantry. However, contrary to the Respondent's statements, the Respondent's use of the Domain Names is not solely informational and non-commercial. Instead, the Respondent charges participants for membership fees and actively sells advertising space on its website, thus benefiting financially from the Domain Names. Further, the Panel views the use of the Domain Names as directly competing with the Complainant's business. The Complainant and the Respondent are both engaged in services related to female impersonation pageantry. The fact that the Respondent uses the Domain Names for message forums and not to sell videos does not mean that the website does not compete with the Complainant's business. The Panel finds that the close similarities between the Respondent's use of the Domain Names and the Complainant's business compel it to conclude that the Respondent's use of the website competes with the Complainant's business.
In light of the Respondent's competition with the Complainant's business for commercial profit, the Panel concludes that the use of the Domain Names by the Respondent does not constitute a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent has no legitimate interests or rights in the Domain Names.
C. Registered and Used in Bad Faith
The Complainant alleges that the Respondent was a friend of Richard Meador, who designed the website connected to the Domain Names for the Complainant, and that the Respondent knew of the Complainant's use of the Domain Names and the Complainant's rights in the mark MISS GAY AMERICA PAGEANT. Further, the Respondent does not deny that he knew of the Complainant's rights in the mark and the Domain Names. The Panel assumes that the evidence presented to it is the best evidence available and fully reflects both parties' positions. As such, the Panel finds that the Respondent knew of the Complainant's rights in the Domain Names when it acquired the registrations.
In addition, the Complainant presented a printout from the Respondent's website to which the Domain Names resolved showing that the Respondent displayed the Complainant's common law design mark on the website. This evidence is not disputed by the Respondent or even mentioned in the Response. The Panel views the Respondent's use of the Complainant's design mark as intentionally creating confusion with the Complainant's customers as to the source of the Domain Names.
In sum, the evidence presented by the Complainant shows that (i) the Respondent knew of the Complainant's rights in its mark and the Domain Names; (ii) the Respondent's use of the Domain Names directly competes with the Complainant's business; (iii) the Respondent has used the Complainant's common law design mark on its website to confuse Internet users; and (iv) the Respondent has used the Domain Names for commercial gain. Accordingly, the Panel finds that the Respondent's registration and use of the Domain Names were in bad faith.
Contrary to the repeated accusations of the Respondent, the Panel does not agree that this case is merely a breach of contract or breach of fiduciary dispute. As set forth above, the Complainant has presented sufficient evidence for the Panel to find in its favor based on established UDRP rules. Further, the Respondent has not presented a shred of credible evidence establishing that he was a bona fide purchaser of the Domain Names. The Panel views the Respondent's breach of contract arguments as a veil to the real issues in this case, including the lack of evidence in the Respondent's favor. Nevertheless, the Panel's decision does not preclude the Respondent from seeking redress for breach of contract claims in a court of competent jurisdiction.
7. 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 , and be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: May 7, 2004
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