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Miss Universe L.P., LLLP v. A Visual Group [2005] GENDND 1426 (29 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Miss Universe L.P., LLLP v. A Visual Group

Case No. D2005-0738

1. The Parties

The Complainant is Miss Universe L.P., LLLP, C/O Craig A. Isaacs Esq., New York, United States of America, represented by Donovan & Yee, LLP, United States of America.

The Respondent is A Visual Group, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <missarizonausa.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2005. On July 13, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 14, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 July 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2005. The Response was filed with the Center on August 3, 2005.

The Center appointed Dennis A. Foster as the sole panelist in this matter on August 15, 2005. 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 organizes beauty pageants using the trademarks MISS USA, MISS ARIZONA, and similar names for the other states in the United States of America. Among the trademark registrations the Complainant owns are: MISS ARIZONA , State of Arizona Trademark no. 31353, dated November 12, 1992; and MISS USA, United States principal registry trademark no. 1,601,484 dated June 12, 1990 in international class 41 for entertainment services in the presentation of pageants. (Complaint Exhibit C).

Complainant has subcontracted out much of the work connected with organizing these beauty pageants, and Respondent for a time worked under license to help organize the filming and Internet aspects of the MISS ARIZONA pageants.

Respondent registered the disputed domain name, <missarizonausa.com>, on January 2, 1998. The license under which Respondent performed work for the Complainant using the MISS ARIZONA trademark expired around April, 2005. Since that time, Complainant has corresponded with Respondent and solicited transfer of the disputed domain name. Respondent refuses and has replied that it plans to use the disputed domain name to work on future MISS ARIZONA pageants or in the alternative to reclaim $1,250 in expenses back from Complainant.

5. Parties’ Contentions

A. Complainant

- For over fifty (50) years, Complainant and its predecessors-in-interest have used the MISS USA mark throughout the United States and the world in connection with beauty pageants and related goods and services.

- The Complainant is the owner of a MISS ARIZONA USA trademark, no. 31353, dated November 12, 1992, Int. Class 41 (Complaint Annex C).

- The MISS USA marks, as applied to Complainant’s pageants, are now amongst the best-known trademarks in the world.

- The disputed domain name, <missarizonausa.com>, is registered and used by Respondent and is confusingly similar to the famous and distinctive MISS ARIZONA and MISS TEEN USA trademarks owned by Complainant.

- Respondent has no rights or legitimate interests in <missarizonausa.com>. The disputed domain name is not the trade name or company name of Respondent, Respondent is not commonly known by that name, and the name does not bear any legitimate relationship to the business of Respondent.

- From the fall of 1997 to April 12, 2005, Complainant licensed Prestige Pageants as a State Director of the preliminary pageants MISS ARIZONA USA and MISS ARIZONA TEEN USA. Prestige Pageants employed Respondent to provide web design maintenance services and permitted Respondent to register the disputed domain name on or about January 2, 1998. Respondent used this website to promote Prestige’s services, namely production of licensed Arizona Pageants and its related pageant services.

- In or about November, 2004, Prestige informed Complainant that it no longer wished to serve as Miss Universe’s licensee to produce the Arizona Pageants. Prestige’s license agreement with Complainant was therefore not renewed and expired on April 12, 2005. The Complainant selected a new State Director for the State of Arizona.

- Accordingly, upon the expiration of its license agreement, neither Prestige nor the Respondent was authorized to use the MISS ARIZONA USA and MISS USA marks and logos, including the disputed domain name which is identical or confusingly similar to these marks. See e.g. Marine Toys for Tots Foundation v. Jim Gayles, WIPO Case No. D2001-0088, March 20, 2001; Senco Products, Inc. v. Camp Creek Co., Inc. WIPO Case No. D2000-0590, September 11, 2000.

- As one UDRP administrative panel recently noted, “[o]nce a license has expired, use of the formerly licensed trademark constitutes infringement. To say that the licensee has acquired rights that survive the legal termination of that license destroys the entire concept of a license.” Mariah Boats, Inc. v. Shoreline Marina, LLC, FA 0004000094392 at p.8 (National Arbitration Forum May 5, 2000) (citing United States Jaycees v. Philadelphia Jaycees, [1981] USCA3 205; 639 F. 2d 134, 143 (3d Cir. 1981). It is clear that neither Prestige, nor Respondent acting on its behalf, has any legitimate rights to the marks MISS ARIZONA USA since the termination of its license with Miss Universe.

- Complainant informed Respondent that Prestige’s license agreement was terminated effective April 12, 2005, and repeatedly requested that Respondent transfer ownership of the disputed domain name to the Complainant for use by its new Arizona State Director. Respondent thereafter disabled its website but refused to transfer the disputed domain name unless Miss Universe agreed to pay it $1,250, an amount which far exceeds Respondent’s out-of-pocket costs directly related to acquiring this domain name (email correspondence attached at Complaint Annex F).

- Respondent’s refusal to transfer the disputed domain name unless the Complainant paid it money in excess of its costs directly incurred in acquiring these domain names constitutes bad faith violation of the Policy.

- Respondent’s registration of the disputed domain name prevents Complainant from reflecting the marks in a corresponding domain name and its passive use constitutes bad faith. Respondent is refusing to transfer the disputed domain name to Complainant in order to prevent the Complainant from properly licensing their use to its newly licensed Arizona State Director for promotion of the Arizona Pageants.

- Respondent’s passive holding of the disputed domain name constitutes bad faith use under the Policy. (see Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, (February 18, 2000)).

- Respondent maintains the disputed domain name to cause confusion among consumers and to divert them to the site for Respondent’s commercial gain. Although Respondent has recently disabled its website at <missarizonausa.com>, if this disputed domain name is not transferred to Complainant, Respondent will be free to use the domain name to promote other pageant services in competition with the MISS ARIZONA pageants and other MISS USA pageants.

B. Respondent

- Respondent has worked for the Complainant for over 25 years as a camera operator and location segment director, so Complainant was aware the Respondent was doing business as <missarizonausa.com> for over 10 years, and was never questioned or given guidelines. In addition, Respondent was never told or asked to take part in their licensing agreements.

- There is nothing confusing: those women pictured on the site represent Miss Arizona USA and Miss Teen Arizona USA for 2005. There is neither diversion nor confusion to consumers, as stated in item 28, other than a link to Respondent’s web site as credited photographer of the photos and a link to Complainant’s web site.

- Throughout the Complaint, there are several repetitive mentions that Respondent has no right or legitimate interest in the disputed domain name. Respondent is a photographer and web designer. Several of Respondent’s clients are in the pageant industry.

- There is no reason that, at a future date, a new director for Arizona may choose to use Respondent to design the Arizona USA web site.

- If Respondent really meant to cybersquat, he would have secured .net, .tv and .org.

- The Complainants have ways of promoting their Arizona pageant other than the disputed domain name such as their present domain name <missarizonausa.net>.

- The disputed domain name was not registered in bad faith under any of the grounds in the Policy at paragraphs 4(b)(i-iv).

6. Discussion and Findings

In order to obtain transfer of the disputed domain name, Complainant must prove paragraphs 4(a)(i-iii) of the Policy:

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

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

A. Identical or Confusingly Similar

Complainant has exhibited a copy of its MISS ARIZONA State of Arizona trademark no. 31353 dated November 12, 1992 valid until 2012 (Complaint Exhibit C). The disputed domain name, <missarizonausa.com>, is identical to Complainant’s trademark. The Panel thus finds Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant acknowledges that Respondent had a license to use its MISS ARIZONA USA trademark up until the license expired in April 2005. Respondent does not dispute this. Nonetheless, Respondent states that it intends to continue to offer the same services as before and use the disputed domain without Complainant’s permission. The Panel does not believe Respondent’s conduct comports with paragraph 4(c)(i) of the Policy: Respondent was not using the disputed domain name to make a bona fide offering of goods and services before he learned of the domain name dispute. In the Panel’s view, Respondent knew it could no longer use the disputed domain name in bona fide as soon as as the license from Complainant expired in April, 2005.

The Panel finds that Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain per paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant has offered a number of contentions as to how Respondent is using the disputed domain name in bad faith. For example, Complainant contends Respondent requested $1,250 for the disputed domain name in violation of paragraph 4(b)(i) of the Policy (Complaint Exhibit F). Complainant also contends that Respondent’s current passive holding of the disputed domain name constitutes bad faith registration and use (per Telstra supra).

The Policy at paragraph 4(a)(iii) calls on Complainant to show bad faith in both registration and use. By Complainant’s own admission, when Respondent registered the disputed domain name in 1998, it did so with Complainant’s consent and thereafter used it to help Complainant carry on its business of organizing MISS ARIZONA beauty pageants until the license expired in April, 2005. As the Complainant states on page 10 of the Complaint: “Prestige [Complainant’s subcontractor] employed Respondent to provide web design maintenance services and permitted Respondent to register the disputed domain name on or about January 2, 1998, at which time Prestige was licensed State Director for Miss Universe [Complainant]. Respondent used this website to promote Prestige’s services, namely production of licensed Arizona Pageants and its related pageant services.”

Thus Respondent certainly did not register the disputed domain in bad faith. For this reason, Complainant has failed to show the disputed domain name was registered in bad faith as required by paragraph 4(a)(iii) of the Policy.

The Complainant has cited several cases where a respondent had some type of license to use a complainant’s trademark, the license was terminated, and the complainant then brought a UDRP administrative proceeding to attempt to gain transfer of a disputed domain name. However, the Panel is not convinced by Complainant’s arguments and does not believe these cases apply here. In Senco Products, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0590, September 11, 2000, the respondent registered the disputed domain name after the license termination as a form of retaliation. And in Mariah Boats, Inc. v. Shoreline Marina, LLC, FA0004000094392, May 5, 2000, the respondent sold many boat brands in addition to the complainant’s and never had a license that specifically contemplated registration of a domain name as in this case.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster
Sole Panelist

Date: August 29, 2005