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 The Marketing Model / Steven Roddy of Belpre, Ohio and Marietta, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2010. On November 11, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On November 11, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 3, 2010.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 10, 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
Complainant and its predecessors-in-interest have used the MISS USA mark in the United States in connection with the promotion and production of an annual beauty pageant since 1952, a period of nearly 60 years.
Complainant is the owner of the United States service mark for MISS USA, Registration No. 1,601,484 registered on June 12, 1990. Additionally, Complainant has an active presence on the Internet via the operation of more than ten websites that include the MISS USA mark in the domain name including .
The Domain Name was registered on April 16, 2010 and expires on April 16, 2011. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant has extensive, exclusive rights in the well known and incontestable trademark MISS USA.
The Domain Name is confusingly similar to the MISS USA mark as it incorporates the entirety of Complainant’s MISS USA mark and only adds the descriptive terms “pageant” and “.org” Such additions do not distinguish the Domain Name from Complainant’s mark and are not sufficient to avoid a finding of confusingly similarity.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent has no rights or legitimate interest in the Domain Name. The Domain Name is not the trade name or company name of Respondent. Respondent is not commonly known by that name, is not a licensee of Complainant and is not authorized to use Complainant’s MISS USA mark.
By registering a domain name that incorporates the entirety of Complainant’s famous MISS USA mark, Respondent’s sole intention was to benefit financially from the renown associated with Complainant’s trademark. By registering a domain name that includes the term “pageant” which describes Complainant’s services, Respondent must have been aware of Complainant’s rights in its MISS USA mark. This is evident because Respondent registered and is using the Domain Name to promote its pageant coaching services.
Respondent’s use of Complainant’s MISS USA mark does not bear any legitimate relationship to Respondent’s business other than to suggest a false association with Complainant and to attract visitors seeking Complainant’s website and/or information about Complainant’s MISS USA Pageant for its own commercial gain by increasing traffic and advertising revenue.
Respondents registered the Domain Name to create a false association with Complainant and its famous MISS USA pageants. Respondent owns the non-infringing domain name , which also resolves to a website that promotes pageant related services, yet Respondent still registered the Domain Name as a means to attract visitors to a different site promoting the same services.
Respondent offered to sell the Domain Name to Complainant and indicated that it would otherwise be put up for an auction sale. This is further evidence of Respondent’s lack of rights and legitimate interest.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
The MISS USA mark is so widely recognized in the United States and throughout the world, Respondent must have been aware of Complainant’s rights in the MISS USA mark when registering the Domain Name.
By including the entirety of Complainant’s famous mark in the Domain Name, Respondent is seeking to create an association with Complainant. Respondent intended to attract Internet users and to capitalize on the goodwill of Complainant’s famous mark for its own commercial gain.
Respondent also intended to leverage a business deal with Complainant when Respondent registered the Domain Name. Respondent responded to Complainant’s cease and desist letter by stating that he “see[s] this as an opportunity for us to work together.” Respondent later offered to sell the Domain Name to Complainant for a value exceeding out-of-pocket expenses or to the highest bidder on a domain name auction. Based on the foregoing, Respondent registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not respond to the Complaint. Because of Respondent’s default, the Panel may accept as true the factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings
Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. (Policy, paragraph 4(a).) A. Identical or Confusingly Similar
Given Complainant’s long and extensive use of the MISS USA service mark and its ownership of a U.S. registration for the MISS USA mark, the Panel finds that Complainant has trademark rights in the MISS USA mark. The Panel also finds that the Domain Name is nearly identical to Complainant’s MISS USA mark. It incorporates Complainant’s entire trademark and differs from Complainant’s registered MISS USA mark only in that it adds the descriptive term “pageant” and “.org” generic top level domain (gTLD). It is well-settled that the mere addition of a generic or descriptive term is not sufficient to avoid confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. (The fact that the word “autoparts” is added to complainant’s trademark does not eliminate the identity, or at least the similarity, between complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.). See also, Bayer Aktiengesellschaft v. Dangos & Partners,WIPO Case No. D2002-1115 (addition of generic words “healthcare” to form domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037 (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the [c]omplainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (finding domains such as , , , and confusingly similar to complainant’s PEPSI mark; stating that “[t]he mere addition of common terms such as ‘sports,’, ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”).
Therefore, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141.
Because Respondent offers the legitimate service of coaching contestants in beauty pageants, including Complainant’s “Miss America” pageant, the Panel has considered whether Respondent’s use of Complainant’s mark is bona fide under Policy, paragraph 4(c)(i) or a nominative fair use under paragraph 4(c)(iii). Under both of these provisions, the Panel finds Respondent has the right to use Complainant’s mark, provided it conforms to well-known limitations.
In the Panel’s assessment, the key requirement of both the bona fide use and the nominative fair use decisions1 is that Respondent’s use not cause confusion or mislead about whether Respondent is sponsored by or affiliated with Complainant. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-09032. New Kids on the Block v. News America Publishing, 971 F.2d 302, 308 (9th Cir. 1992)3.
Although the Panel finds Respondent has the right to communicate that it offers the legitimate service of coaching contestants in the MISS USA pageant, and to use (consistent with Oki Data and New Kids) the MISS USA mark when doing so, the Panel does not find Respondent has done enough to make clear that it is not affiliated with or sponsored by Complainant.
The Domain Name is little more than . In Toyota Motor Sales, USA, Inc. v. Tabari (“Toyota v. Tabari”), 610 F.3d 1171 (9th Cir. 2010), the Ninth Circuit held: “When a domain name consists only of the trademark followed by .com, or some other suffix like .org or .net, it will typically suggest sponsorship or endorsement by the trademark holder. … Where a site is used to sell goods or services related to the trademarked brand, a domain will therefore suggest sponsorship or endorsement and will not generally be nominative fair use.” Id, at 1177-78 and n. 4. This same result obtains when additional geographic terms are added, as in 4. See also, Hansgrohe AG. v. Kaiping Aosgrohe Hardware Factory / Wang Libin, WIPO Case No. D2010-0954; Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (when evaluating nominative fair use, domain like better than simply ).
Although Toyota v. Tabari does not control these proceedings, it nonetheless influences this Panel to find that Respondent’s Domain Name, viewed in isolation, suggests sponsorship or approval. The Panel finds that is analogous to , in that the word “pageant” does nothing to convey that Respondent is a non-affiliated entity. Under Tabari, Respondent might, depending on all the facts, have done better to add the word “coach” to its domain name, thereby signaling its services.
However, to make out a prima facie case under Policy, paragraph 4(b)(ii), it is not enough, in this Panel’s view, merely to point to a domain name that, in isolation from the associated content, fails to dispel sponsorship. This Panel considers that the content of the webpages should also be considered.
With respect to the extent to which the content associated with a disputed domain name should be considered dispositive, the UDRP decisions indicate varying perspectives on this point. Often the domain name by itself does not supply enough information to communicate unequivocally whether it is associated with a bona fide use or a fair use. Many decisions find (or refuse to find) that a use is bona fide based in part on the content of the web page. See, e.g. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ( was bona fide use in part because respondent “prominently discloses that it is merely a repair center, not Oki Data itself.”). Other decisions have held that the focus should be on the domain name itself, and find (relying on initial interest confusion analysis) no rights or legitimate interests where the domain name itself is confusing when viewed alone, in isolation from content pages. RapidShare AG and Christian Schmid v. Hou Yanpeng,WIPO Case No. D2010-0893 ( not nominative fair use because complainant’s entire mark used in the domain name without additional confusion-dispelling words), citing Volvo Trademark Holding AB v. e-motordealer Ltd.,WIPO Case No. D2002-0036. ( not fair use: “[T]he [d]omain [n]ame chosen by [r]espondent at first sight appears to be one of [c]omplainant’s and it is only upon arriving at and studying the web page that the (intended) disclaimer can be seen. At that point, the consumer has already been diverted and mislead, attracted by the false impression created by the misleading [d]omain [n]ame. … This proceeding is only concerned with the use of the word VOLVO in a [d]omain [n]ame.”). Where political speech is at issue, one panel has refused to limit its focus to the domain name and focused on consideration of the content in deciding whether there was fair use. Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall,WIPO Case No. D2009-11825.
Importantly, the Policy, paragraph 4(a)(i) question will generally speaking have already been decided against Respondent before the paragraph 4(a)(ii) issue is reached. Consequently, the question under paragraph 4(a)(ii) is: “Assuming the domain name is confusingly similar under Policy, paragraph 4(a)(i), does the evidence, when considered in its entirety, demonstrate that Respondent has rights or legitimate interests.” Framing the issue this way, this Panel concludes that the content of a website should generally be considered when evaluating Policy paragraphs (4)(b) and 4(c)(i), (iii). To this Panel, excluding consideration of the content of the web pages associated with the Domain Name is problematic for multiple reasons. First, doing so collapses the Policy, paragraphs 4(a)(i) and 4(a)(ii) elements. The finding of confusion under paragraph 4(a)(i) would automatically prevent a finding of legitimate rights under 4(a)(ii) or 4(c)(i) or 4(c)(ii), since the controlling jurisprudence requires that, to be bona fide or fair, the use must not cause confusion. Second, doing so ignores the myriad cases that justify evaluating paragraph 4(a)(i) without examination of the content of the associated webpages by reassuring respondents that content is more properly considered under paragraph 4(a)(ii) and 4(a)(iii). It is clear to the Panel that the content of a website is not generally considered relevant when deciding the Policy, paragraph 4(a)(i) issue6 – whether the domain name is confusingly similar to Complainant’s work, with myriad panelists observing that content ought instead to be considered when deciding the rights or legitimate interests question under Policy, paragraph 4(a)(ii) or the bad faith issues under Policy, paragraph 4(a)(iii). Third, it would in this Panel’s assessment be unfair to disallow consideration of content to establish bona fide or fair use, but allow such consideration to disprove such use, as is often done.
Accordingly, this Panel does not confine its attention to the Domain Name alone, but also considers the content of the website. The Panel concludes, however, that, where as here, the domain name does not itself reflect non-affiliation or fair use, Respondent has a heightened duty clearly to explain its non-affiliation with the trademark owner.
Respondent here did not do so. It did not take sufficient steps to disavow an affiliation with Complainant. Without any disclaimers the landing page contains many elements that would allow a visitor to believe, or at least wonder, whether the site was sponsored by or affiliated with Complainant:
Miss USA Pageant
Exclusive Interviews with State
Title Holders who share their
SECRETS on WINNING the
Crown!!!
The Miss USA pageant is a competitive organization to be involved with. Therefore, we at The Pageant Planet have set out to make the Miss USA pageant [] easier for you. How?
What sets apart a Miss USA or Miss Teen USA from a first runner up? Or what sets the girls in the top 10 from the girls in the top 15?
Information.
But, not just any information…the BEST information from the people who know…the experts in pageantry.
Free Miss USA Pageant Coach.
We at the Pageant Planet are FREE online pageant coach [] who interview pageant experts in the Miss USA system asking them the questions that you give us to ask…and we provide all of that information for you at no charge.
The confusion-causing elements are many. The page starts with the mark “MISS USA Pageant” appearing alone without any statement clarifying the relationship to Complainant. It claims to have “exclusive interviews” with winners, a claim which suggests affiliation. It ambiguously asserts that, “The MISS USA Pageant is a competitive organization to be involved with.” It associates the MISS USA Pageant with an immediately following hyperlink to its cousin website “www.”. It refers to the access to “experts in the MISS USA system“, a phrase which suggests affiliation.
Despite these many hints at sponsorship or affiliation with Complainant, there is no disclaimer. Although disclaimers are not required when nominative fair use is manifest, they are relevant. Toyota v. Tabari, 610 F.3d at 1177. While adding a disclaimer is not a panacea and will not always prevent confusion, the absence of a disclaimer nonetheless militates against a finding of bona fide or nominative fair use.
The Panel therefore finds, based on a review of not only of the Domain Name in isolation, but also of the associated webpages, that Complainant has made a prima facie showing that Respondent does not have rights or a legitimate interest in the Domain Name, thereby shifting the burden to Respondent. Based on the Panel’s review of the evidence and Respondent’s failure to respond, Complainant has prevailed in establishing that Respondent lacks rights to or a legitimate interest in the Domain Name. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141. C. Registered and Used in Bad Faith
Respondent was well aware of Complainant’s rights in the MISS USA mark. This supports a finding of bad faith registration. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. HostM INC / Stephen Lee,WIPO Case No. D2010-1355. See also, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith); AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440. The Panel finds that Respondent intended to exploit the fame of Complainant’s mark to attract for commercial gain Internet users to its website. The same facts that led the Panel to the finding that Respondent lacked rights in the Domain Name also support a finding of bad faith registration and use. In addition to boldly admitting its intention for commercial gain, Respondent made no effort to make it clear to visitors that it was not affiliated with Complainant. This intentional attempt 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 [respondent’s] web site …” is evidence of bad faith under Policy, paragraph 4(b)(iv). B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Respondent's demand that Complainant pay USD 1,500, which is more than Respondent’s out of pocket expenses, to buy the Domain Name, especially when combined with the threat to offer the Domain Name in an online auction, also supports the Panel’s finding of bad faith. Custom Bilt Metals v. Conquest Consulting,WIPO Case No. D2004-0023.
The Panel therefore finds that Complainant has proved Respondent’s bad faith in registering and using the Domain Name under Policy, paragraphs 4(b)(ii) and (iv). 7. Decision
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: December 29, 2010
1 Because both parties are from the United States, it is appropriate to consider United States Lanham Act jurisprudence. Rules, paragraph 15(a); Arnold Clark Automobiles Limited v. Thomas (aka Tam) Coughlan,WIPO Case No. D2002-0909.
2 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 articulated a standard for determining whether activities constitute the bona fide offering of goods and services: (1) Respondent must actually be offering the goods or services at issue; (2) Respondent must use the site to sell only the trademarked goods; (3) The site must accurately disclose the registrant's relationship with the trademark owner and not cause confusion about respondent’s relationship/or affiliation with the trademark owner; (4) Respondent must not try to corner the market in all domain names.
3 In New Kids on the Block v. News America Publishing, 971 F.2d 302, 308 (9th Cir. 1992), the Ninth Circuit United States Court of Appeals first articulated the three part test for nominative fair use that is now widely followed in UDRP decisions applying Policy, paragraph 4(c)(3). First, the product must not be readily identifiable without use of the mark; Second, only so much of the mark may be used as is reasonably necessary to identify the product; Third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002). Sutherland Institute v. Continuative LLC,WIPO Case No. D2009-0693; Pfizer Inc v. Van Robichaux,WIPO Case No. D2003-0399. See also Toyota v. Tabari (9th Cir. 2010), 671 F.2d 1171 (9th Cir. 2010) ( and ); (Defendants operated “broker” service for Lexus automobiles).
4 “Of course a domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder. We’ve already explained why domains have that effect. See pp. 9707-08 supra. Sites like trademark-USA.com, or e- will also generally suggest sponsorship or endorsement by the trademark holder; the addition of “e” merely indicates the electronic version of a brand, and a location modifier following a trademark indicates that consumers can expect to find the brand’s local subsidiary, franchise or affiliate.” Toyota v. Tabari, 610 F.3d at 1179.
5 “It can be and has been argued by [c]omplainant that the disputed domain name should be assessed ‘standing alone’ because at least some Internet viewers will only have that first impression (i.e., they will not click through). However, this case involves a form of speech arguably strongly protected under the First Amendment of the U.S. Constitution. This [p]anel is very reluctant to reject [r]espondent's claim of legitimate noncommercial and fair use on the distinction between viewing of the disputed domain name itself and clicking through to [r]espondent's website. On the same basis by which the [p]anel has determined the disputed domain name is confusingly similar to [c]omplainant's trademark - that is, Internet users viewing the disputed domain name will be curious and motivated to visit the website - the [p]anel also considers that [r]espondent's speech should be assessed as a whole, both by reference to the disputed domain name and the content of [r]espondent's website (i.e., on the assumption the preponderance of Internet users will indeed click through).”
6 This is the consensus view: “1.2 Is the content of a web site relevant in determining confusing similarity? Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2.
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