moniquesfatchance.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oxygen Media Corporation v. Spiral Matrix

Case No. D2006-0521

1. The Parties

The Complainant in this case is Oxygen Media Corporation, New York City, United States of America and is represented by an internal representative.

The Respondent in this case is Spiral Matrix, Eldoret, Kenya.

2. The Domain Names and Registrar

The disputed domain name is <moniquesfatchance.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com., New Orleans, Lousiana , United States of America.

3. Procedural History

Issuance of Complaint

3.1 The Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, (“Policy”), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date (“Rules”). The Complaint was received by the Center on April 25, 2006. An Acknowledgment of Receipt was sent by the Center to the Complainant by email on April 26, 2006.

Confirmation of Registration Details

3.2 On April 25, 2006, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue.

On the, April 26, 2006, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. Intercosmos Media Group, Inc. d/b/a directNIC.com also provided the contact details for the administrative, billing, and technical contact and confirmed that the status of the domain name in issue is “active” but would remain locked during the pending administrative proceeding. The Registrar also confirmed that its Service Agreement is in effect and the Respondent as registrant of the domain name agreed to be bound by the domain name dispute policy incorporated therein. The dispute policy incorporated into the service agreement is the Uniform Domain Name Dispute Resolution Policy.

On the same day (April 29, 2006), the Center sent a formal acknowledgement of Receipt of Complaint by way of email to both the Complainant and Respondent and confirmed that both a Center Case Manager as well as case number D2006-0521 had been allocated to the dispute and that the Center was obliged under Paragraph 4(a) of the Uniform Rules to determine if the Complaint satisfies the formal requirements of the Uniform Policy and the Uniform Rules.

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”).

Notification to Respondent

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, and that payment of the filing fee had been properly made, the Center issued to the Respondent, and to the technical and zone contact for the domain name, a formal Notification of Complaint and Commencement of Administrative Proceeding, by email and by courier to the address provided by the Registrar on May, 11, 2006. A copy of this Notification of Complaint was sent to the Complainant, by way of the same email on May, 11, 2006.

3.4 This Administrative Panel finds that the WIPO Center has discharged its responsibilities under Paragraph 2(a) and 4(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent”. In accordance with the said paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint that the proceedings commenced. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2006.

Constitution of Administrative Panel

3.5. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2006. The Center appointed Dr. Colin Yee Cheng Ong as the sole panelist in this matter on June 20, 2006. 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 Uniform Rules, paragraph 7.

Issuance of Procedural Order No. 1

3.6 After reviewing the file, the Panel noted that the Complainant in these proceedings had asserted rights to the mark MO’NIQUE’S FAT CHANCE on the basis of a trademark application. The Panel noted that the mere filing of an application is not generally considered under the Policy to give rise to rights or legitimate interests in a mark. It was the Panel’s view at the time, without foreshadowing a decision on this issue, that the Complainant also appears to claim unregistered (or common law) trademark rights in that mark based inter alia on its prior use in connection with the offering of certain beauty pageant and television broadcast goods and/or services. However there was no supporting evidence for this claim.

Accordingly, on August 7, 2006, the Panel in exercise of the discretion available under paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), issued Procedural Order No. 1, directing that copies the Complainant file a Further Statement and provision of any relevant supporting documentation regarding this issue with the WIPO Arbitration and Mediation Center (the “Center”) by August 14, 2006.

The Panel further directed that wherea Further Statement and/or supporting documentation was received by the Center by that date, the Respondent would then have five (5) calendar days from the date of acknowledgement of receipt by the Center of the Complainant’s Further Statement to file with the Center a Reply to the Further Statement along with any supporting documentation.

The Complainant filed supporting documentation to the Center within the deadline. The Respondent did not file any Reply or response to Procedural Order No. 1.

4. Factual Background

The following facts and circumstances, which have been alleged and satisfactorily evidenced by the Complainant, and have not been contested by Respondent by reason of its defaults, are being held as true by the Panel:

4.1 The Complainant and its activities

The Complainant Oxygen Media Corporation claims to own all rights and interest in the unregistered mark and tradename MO’NIQUE’S FAT CHANCE which is the title of an on-going beauty pageant and television program that is being broadcasted on the Oxygen television network.

4.2 Complainant’s Activities

The Complainant asserts that it was founded in 1998, and that it owns and operates a 24 hour cable television network which is made available to 60 million cable households throughout the United States and in the Caribbean. The Complainant has expended much time, effort and resources in building the Oxygen name and its reputation with the broadcast world. The Complainant claims that since its inception, it has developed, produced, distributed and promoted many shows and websites, including MO’NIQUE’S F.A.T. CHANCE which is asserted to be both a beauty pageant and a television program.

4.3 Complainant’s Trading Name

The Complainant contends that viewers of its television program identify the Complainant with the name MO’NIQUE’S F.A.T. CHANCE and that this name has acquired distinctiveness and should be afforded all of the same rights as a trademark. The Complainant contends that its subsidiary (O2 Holdings, LLC) has filed applications with the United States Patent and Trademark Office for MO’NIQUE’S FAT CHANCE in Classes 9, 38 and 41(Serial Numbers 78/856648; 76/658075 and 76/658076, respectively).

4.4. Respondent’s Identity and Activities

The Respondent is the registrant of the domain name <moniquesfatchance.com> which is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com. No material has been provided by the Respondent regarding its activities.

5. Parties’ Contentions

A. Complainant

(a) The Complainant has the Right to the Mark/Domain Name

The Complainant contends that for the reasons given above (see Paragraph 4.2 and 4.3 above) and for the reason that it had engaged in much publicity to promote the MO’NIQUE’S FAT CHANCE pageant since the last week of May 2005, on television stations, newspapers around the United States and on Oxygen’s web site, it has a legitimate right to the tradename. The Complainant also submitted that it held live auditions in 3 different major US cities in the month of June 2005 which were accompanied by publicity and press releases in each of the three locations.

(b) Respondent has made Wrongful use of the Mark as its Domain name

The Complainant contends that Respondent had wrongfully registered the domain name <moniquesfatchance.com> with the Registrar on July 7, 2005, without Complainant’s knowledge or permission, and shortly thereafter, established a website. The Complainant asserts that the Respondent’s registration of the Domain Name is an attempt to capitalize and trade on Complainant’s name, identity, reputation and business.

(c) The Domain Name Infringes Upon Complainant’s Rights in the Mark

The Complainant submitted that the Respondent has registered the domain name in bad faith in leading consumers who see the Domain Name to believe that it is related to the Complainant and that the likelihood of confusion must be presumed. The Complainant also submitted that as Respondent’s site does not glorify the larger woman, but instead is a gateway for information on obesity, fat, and diet, that it would cause consumers accessing the site for information to be insulted in most cases. Finally, the Complainant makes reference to three decisions under the Policy where Respondent had registered domain names based on the trademarks of others which were later ordered to be transferred back to the rightful owners. The three examples given were (1) Enterprise Rent-A-Car Company v. Spiral Matrix, National Arbitration Forum, Case No. FA 08575 (2)Target Brands, Inc. v. SpiralMatrix, National Arbitration Forum, Case No. FA 624926 and (3)Dr. Ing.h.c.F. Porsche AG v. Kentech, Inc.a.k.a. Helois Laba.k.a.Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrixand Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890.

B. Respondent

The Respondent did not submit any response.

6. Discussion and Findings

The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy.

According to Paragraph 14 (a) of the Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel is directed to make a decision on the administrative proceedings on the basis of the complaint and in accordance with Paragraph 14 (b), the Panel shall “draw such inferences there from as it considers appropriate”

The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. If the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant right, or even that he does not wish to respond of defend his perceived interest in the trademark. In such case of silence by the Respondent, the Complainant shall then continue with his case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: Easyjet Airline Company Ltd. v. Easy Jet Vaccums Andrew Steggles, WIPO Case No. D2000-0024 and Société Franpin v. Paint-Tools, WIPO Case No. D2000-0052).

The Panel should not decide in the Complainant’s favor solely because of the reason of the Respondent’s default (See: Cortefiel S.A. v. Miguel Garcìa QuintasWIPO Case D2000-0140). Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:

(i) The Respondent’s 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 Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or confusingly similar

The Panel finds that the Complainant has submitted a light response to the Panel’s Procedural Order No. 1.

There was no proper Further Statement from the Complainant nor any form of indexing nor explanation as to the collection of advertisements and newspaper cuttings given by the Complainant as evidence. The evidence given was not properly introduced by the Complainant nor was there any submission as to how the Complainant wished to rely upon the documents submitted.

However, the Panel has taken note that the Complainant has no independent experienced legal representation. Despite the limited probative value of much of the evidence produced, the Panel did find some media write ups on the Complainant’s mark and trade name MO’NIQUE’S FAT CHANCE as sufficient to justify unregistered (or common law) trademark rights in that mark.

The Panel draws inferences from the various newspaper releases including the Seattle Times, New York Post and National Enquirer as evidence of prior use by the Complainant’s mark and trade name MO’NIQUE’S FAT CHANCE in connection with the offering of certain beauty pageant and television broadcast goods and/or services.

Goodwill to a particular unregistered (or common law) trademark rights is ordinarily acquired after long and extensive use of the name in question in relation to a business. However, there are exceptions to this general rule. Goodwill can be generated very quickly in this modern era by way of mass advertising and promotion. See GOVIA Limited v. Keith PainterWIPO Case No. D2002-0199.

The Panel has concluded on the balance of probabilities that given the several original press releases writing on the Complainant’s trade name MO’NIQUE’S FAT CHANCE and given the likely motives of the Respondent (see below), the Complainant must have acquired the relevant rights by the date the Domain Name was registered. As newspapers throughout the US were by then already describing the Complainant’s new business name MO’NIQUE’S FAT CHANCE, the general public would on balance have recognised the name as being the name of that business and distinctly associated with it.

Accordingly, whether or not the Complainant’s rights need to be in existence at the date of registration of the Domain Name, the Panel finds that in this case the Complainant did have common law rights in the name MO’NIQUE’S FAT CHANCE at that date and that the Complainant has succeeded in proving the first requirement of having rights to the mark.

In addition, the Panel finds that the contested domain name, <moniquesfatchance.com> is confusingly similar or identical to the Complainant’s mark. The test as to what constitutes “confusing similarity” in such proceedings as these, in the Panel’s opinion, is whether or not an informed potential customer of the rightful services would, during the process of looking at the domain name, reasonably believe that the website to be accessed was operated by, or on behalf of, the owner of a trademark in connection with that owner’s business.

The only difference between the disputed domain name and the Complainant’s trade name is the 2 missing apostrophes. However, it is a commonly known fact that apostrophes cannot be used in domain names, and that lower case letters are used. A person accessing the website would be reasonably likely to confuse the disputed domain name with the mark MO’NIQUE’S FAT CHANCE as the mark itself is the dominant element of the domain name.

The Panel concludes that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or legitimate Interests

The Complainant contends that the Respondent has no legitimate interest in the disputed domain name but has instead attempted to capitalize and trade on the Complainant’s name, identity, reputation and business. Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Complainant has established prima facie evidence that none of the three elements establishing legitimate interests or rights mentioned in paragraph 4(a)(ii) of the Policy applies. In such instance, the burden of proof shifts on the Respondent to rebut the evidence (see, eg: Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Respondent had been given the opportunity to respond and to present evidence in support of the elements in paragraph 4(c) of the Policy. The Respondent chose not to do so and has not filed any response in this proceeding to establish any circumstances that could assist it in demonstrating any rights or legitimate interest in the disputed domain names. Although the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Panel can however and does draw evidentiary inferences from the failure of the Respondent to respond. The Complainant has established a prima facie case of lack of rights and legitimate interests and the Respondent has failed to rebut the presumption of absence of rights or legitimate interests. (See, Centurion Bank of Punjab Limited v. West Coast Consulting, LLCWIPO Case No. D2005-1319).

In support of its contentions that the Respondent has no rights or legitimate interests in the domain name at issue, and that the domain name was registered in bad faith, the Complainant has drawn the Panel’s attention to previous decisions by panels from the National Arbitration Forum and WIPO UDRP panels in which the present Respondent was also the Respondent and had been found to have registered and used domain names in bad faith. Although, one cannot make an automatic conclusion that the Respondent has acted wrongfully in this particular case, in the light of the evidence presented as well as the prior involvement of the Respondent to UDRP proceedings, the Panel decides that the Complainant has satisfied the second test in showing the Respondent’s probable lack of rights or legitimate interest in the domain name.

The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name and, accordingly, paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

The Respondent has registered the domain name which appears to have been selected precisely for the reason that it is identical or confusingly similar to Complainant’s MO’NIQUE’S FAT CHANCE unregistered trademark and trade name. The Complainant has expended much effort and resources in the United States and in the Caribbean in developing, distributing and promoting many shows and websites for the mark and show MO’NIQUE’S F.A.T. CHANCE. The Respondent has no affiliation with the Complainant.

The panel disagrees with the Complainant’s submission that because the Respondent’s site has been used as a gateway for information on obesity, fat, and diet and does not glorify the larger woman, it would necessarily cause consumers accessing the site for information to be insulted in most cases. The panel does however find that in view of the submitted evidence, and in the specific circumstances of this case, there is a very strong inference that the Respondent’s purpose in registering the domain name was for commercial gain in bad faith within the meaning of the Policy.

The Panel also notes that the disputed domain name currently resolves to what appears to be a parked website containing a number sponsored links and a “search” engine. It is not unreasonable to assume from this that the Respondent is currently using the site to obtain click-through or other hit related profits derived primarily from the likelihood of internet user confusion of the domain name with the mark and well-known show of the Complainant.

The Panel finds that the Complainant has established that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Uniform Rules, the Panel orders that the domain name, <moniquesfatchance.com> be transferred to the Complainant.

Dr. Colin Yee Cheng Ong
Sole Panelist

Dated: August 28, 2006