WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Miss Universe L.P., LLLP v. Peter Kalaj

Case No. D2012-0841

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.

Respondent is Peter Kalaj of Astoria, New York, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <elegantmissusa.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 20, 2012, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On April 24, 2012, Register.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on April 23, 2012 regarding a deficiency in the Complaint. Complainant filed an amendment to the Complaint on April 23, 2012.

The Center verified that the Complaint together with the amendment to 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 April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.

The Center appointed Gary J. Nelson as the sole panelist in this matter on May 18, 2012. 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.

After being notified that the Panel was appointed, Respondent submitted e-mails directly to the Center on May 18 and 24, 2012. In regard to these e-mails, even though the correspondence is untimely, the Panel has fully considered the statements when issuing its decision.

In regard to any correspondence sent by the Respondent to only the Complainant, and even though the Complainant subsequently forwarded the correspondence to the Center, the Panel has not considered the content of these communications when issuing its decision.

4. Factual Background

Complainant is the owner of at least three United States trademark registrations for MISS USA. Specifically, Complainant owns at least the following trademark registrations in the United States:

Complainant has used the MISS USA trademark in the United States in connection with the promotion and production of an annual beauty pageant where women from all over the United States compete for the title of “Miss USA”.

The winner of the Miss USA contest then advances to compete in Complainant's Miss Universe pageant where women from over 80 countries worldwide compete for the title of “Miss Universe”.

The disputed domain name was registered on July 5, 2011. The operational website at <elegantmissusa.com> features an online retail store outlet for women's dresses and gowns where an Internet user can shop and purchase various clothing items.

5. Parties’ Contentions

A. Complainant

Complainant uses its MISS USA mark in association with a beauty pageant, and for clothing, cosmetics, dolls and magazines, among other products and services.

Complainant owns numerous valid trademark registrations for MISS USA in the United States. The MISS USA mark has been in use for at least sixty years and is now legally famous for the goods/services associated with the mark.

Complainant generates millions of dollars in gross annual revenue from sponsorships and from licensing its MISS USA mark, and from selling broadcast rights for the associated beauty pageant, ticket and program sales, titleholder appearances and other related sources of revenue.

Complainant has an active present on the Internet, including an operational website at “www.missusa.com”.

Prior to filing the Complaint, Complainant failed in its attempt to negotiate the voluntary transfer of ownership of the disputed domain name.

Complainant's rights in the MISS USA mark were established prior to the registration of the disputed domain name.

Respondent was aware of Complainant's rights in MISS USA when Respondent registered the disputed domain name.

The disputed domain name is confusingly similar to Complainant's MISS USA mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not formally reply to the Complainant’s contentions, but did send two e-mails directly to the Center that appear to generally object to the filing of the Complaint by Complainant, and to the jurisdiction of the Center over the pending dispute. These e-mails are detailed below.

Email of May 18, 2012:

"I have licence to operate my business, please stop harassing me with e-mails and letters."

Email of May 24, 2012:

"You can suck it…i have licence to operate my business."

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in 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

Complainant has established that it owns prior rights in the MISS USA mark and the disputed domain name is confusingly similar to Complainant’s MISS USA mark.

Complainant owns at least three MISS USA trademark registrations in the United States. One of these registrations is for United States trademark registration no. 1,601,484. The registration date for this trademark (i.e., June 12, 1990) precedes the date upon which the disputed domain name was registered (i.e., July 5, 2011).

Accordingly, Complainant has established rights in its MISS USA mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).

The disputed domain name, <elegantmissusa.com>, is confusingly similar to Complainant’s MISS USA trademark because the disputed domain name incorporates the entirety of Complainant’s MISS USA trademark and merely adds a generic descriptive term (i.e., "elegant") and a top-level “.com” domain suffix. Neither the addition of a purely descriptive/generic term to a well-known mark or the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

The addition of the word "elegant" directly in front of Complainant's MISS USA mark is insufficient to avoid a finding of confusing similarity.

Complainant has proven the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “miss,” “usa” or any combination of these words/letters. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its MISS USA mark.

Even though Respondent does claim to have a license to use the ELEGANT MISS USA mark and operate the website at “www.elegantmissusa.com”, Respondent has not submitted any evidence in support of this claim. Accordingly, Respondent's mere allegation that it received a license is insufficient to establish that it has rights and legitimate interests in the disputed domain name.

Complainant has provided unrebutted evidence showing that Respondent is operating a website at <elegantmissusa.com> featuring products/services that are related to the products covered by its trademark registrations. Respondent's decision to add a common descriptive word (i.e., "elegant") to a well known trademark does not instill Respondent with legitimate rights in the composite name or mark. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstor.com> and <chanelfashion.com> to complainant).

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that Respondent likely chose the contested domain name with full knowledge of Complainant’s rights in the MISS USA trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was aware of the rights owned by Complainant in MISS USA when Respondent registered the disputed domain name. The Panel finds this unrebutted allegation to be convincing and sufficient to establish the bad faith registration and use of the disputed domain name.

Respondent’s awareness of Complainant’s MISS USA trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name and since the MISS USA trademark is well-known and famous. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

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 <elegantmissusa.com> be transferred to the Complainant.

Gary J. Nelson
Sole Panelist
Dated: May 24, 2012