DECISION

Mrs. America Productions, Inc. and Mrs. World Pageants, Inc. v. David Ranns dba The Perfidia Group Limited

Claim Number: FA0112000102748

PARTIES

Complainant is Mrs. America Productions, Inc. and Mrs. World Pageants, Inc., Santa Monica, CA (“Complainant”) represented by Ira M. Siegel, of Law Offices of Ira M. Siegel.  Respondent is David Ranns dba The Perfidia Group Limited, Sacramento, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <mrsamerica-pageant.com> and <mrsworld-pageant.com>, registered with Network Solutions.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2001; the Forum received a hard copy of the Complaint on December 10, 2001.

On December 7, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <mrsamerica-pageant.com> and <mrsworld-pageant.com> are registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@mrsamerica-pageant.com and postmaster@mrsworld-pageant.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <mrsamerica-pageant.com> domain is confusingly similar to Complainant’s MRS. AMERICA registered trademark and Respondent’s <mrsworld-pageant.com> domain name is confusingly similar to Complainant’s MRS. WORLD registered trademark.

Respondent has no rights or legitimate  interests with regard to the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant owns the following United States trademark registrations, among others, in conjunction with the promotion of the sale and goods of other people through its beauty pageants: MRS. AMERICA (Reg. No. 2,130,222) registered in 1996, MRS. WORLD (Reg. No. 1,500,741) registered in 1996, and MRS. AMERICA PAGEANT and Design (Reg. No. 1,215,178) registered in 1980.

Complainant has produced beauty pageants under the MRS. AMERICA mark since 1976 and under the MRS. WORLD mark since 1986.  In the course of its beauty pageant production, Complainant promotes, markets, and advertises the goods and services of others.  The two pageants are well known as they are often nationally televised.  As a result, Complainant has established substantial goodwill in such marks among pageant viewers and among parties desiring to advertise during the beauty pageant.

Complainant has also established a reputation on the Internet by promoting its beauty pageants on its <mrsamerica.com> and <mrsworld.com> websites.

Respondent registered the <mrsamerica-pageant.com> domain name on August 16, 1999 and the  <mrsworld-pageant.com> domain on January 1, 2000.  Respondent takes credit for producing the MRS. AMERICA pageant on its <mrsamerica-pageant.com> website and Respondent includes depictions from Complainant’s MRS. WORLD pageant  on its <mrsworld-pageant.com> website.  Finally, both of Respondent’s websites contain links that indicate sponsorship by third parties like American Express, Enterprise Rent-a-Car, Office Depot and Columbia House.com.

DISCUSSION

Paragraph 15(a) of the Rules instructs this 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 Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established sufficient rights in the MRS. AMERICA trademark as well as the MRS. WORLD trademark through its registration of the marks on the Principal Register of the Unites States Patent and Trademark Office.

Respondent’s <mrsamerica-pageant.com> and <mrsworld-pageant.com> domains are confusingly similar to Complainant’s MRS. AMERICA and MRS. WORLD trademarks respectively because they incorporate Complainant’s trademarks in their entirety.  See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). 

Moreover, the disputed domains are likely to be falsely associated with Complainant’s MRS. AMERICA and MRS. WORLD marks due to the combination of the marks with the term “pageant”, which describes Complainant’s primary use of the mark.  A likelihood of false association by Internet users of Respondent’s domain name with Complainant’s trademark indicates the two are confusingly similar.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant).

           

            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has failed to submit a Response, the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is presumed not to have rights or legitimate interests in the domain names because it has not responded to this Complaint.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent’s use of the confusingly similar domain names to attract confused Internet users and commercially benefit from advertisors on its website links is not a bona fide offering of goods.  As a result, the activity implies that Respondent does not hold rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(i).   See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

The fame of Complainant’s MRS. AMERICA and MRS. WORLD pageants is sufficient proof that Respondent was not commonly known by the <mrsamerica-pageant.com> and <mrsworld-pageant.com> domains.  Accordingly, Respondent does not have rights or legitimate interest pursuant to Policy ¶ 4(c)(ii).  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

Respondent’s use of the confusingly similar domains to suggest a false connection with Complainant’s pageant activities does not grant Respondent rights or legitimate interests pursuant to Policy  ¶ 4(c)(iii).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the confusingly similar domain names to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Due to the fame and notariety of Complainant’s pageants and its marks, Respondent’s selection of the disputed domain names incorporating the famous registered marks in their entirety evinces bad faith registration.  See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”).

Moreover, Respondent’s <mrsamerica-pageant.com> and <mrsworld-pageant.com> domain names so obviously suggest an affiliation with Complainant’s MRS. AMERICA and MRS. WORLD marks that Respondent’s unauthorized use of the domains suggests opportunistic bad faith.  See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain names <mrsamerica-pageant.com> and           mrsworld-pageant.com> be hereby transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist.

Dated: February 4, 2002

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