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WIPO Domain Name Dispute D2005-0

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WIPO Domain Name Dispute D2005-0 Powered By Docstoc
					WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Mudd (USA), LLC v. Unasi Inc. Case No. D2005-0727

1.

The Parties The Complainant is Mudd (USA), LLC, New York, United States of America, represented by McCarter & English, LLP, United States of America. The Respondent is Unasi Inc., Panama.

2.

The Domain Name and Registrar The disputed domain name is <muddgirls.com> which is registered with DomainDoorman, LLC.

3.

Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2005. On July 11, 2005, the Center transmitted by email to Compana LLC, a request for registrar verification in connection with the domain name at issue. On August 9, 2005, Compana LLC transmitted by email to the Center its verification response informing that the domain name at issue had no ownership and that it was in redemption period. On August 23, 2005, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On August 24, 2005, DomainDoorman, 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 Respondent, and confirmed that the Policy (as defined below) applied to the registration, that the disputed domain name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission by the Respondent to the jurisdiction at the Registrar’s principal office. In response to a notification by the Center that the Complaint was administratively deficient, on September 2, 2005, the Complainant filed an Amended Complaint, which expressly states that it amends in its entirety the prior Complaint and its exhibits filed in
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July 2005. The Center verified that the Complaint and the Amended 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 September 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2005. The Center appointed Gerardo Saavedra as the sole panelist in this matter on October 13, 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. Pursuant to paragraph 11 of the Rules, the language of the proceedings shall be English.

4.

Factual Background The Complainant is a company incorporated in Delaware with a principal place of business in New York. Complainant is the assignee of Paper Denim and Cloth, LLC f/k/a Mudd, LLC (“PD&C”). Complainant supplied a list of trademarks registered around the world, as well as copies of the following trademark registrations for MUDD: United States of America, registration No. 2537262, registered in February 2002, stated first use and in commerce July 1998. United States of America, registration No. 1992148, registered in August 1996, stated first use and in commerce September 1995. Panama, registration No. 94869, application date July 14, 1998. Panama, registration No. 120102 01, application date March 19, 2002.

On May 21, 2004, PD&C assigned to Complainant all of the worldwide MUDD trademark registrations and goodwill associated therewith. Likewise, on May 21, 2004, PD&C assigned to Complainant the domain name <muddjeans.com>, where Complainant offers its goods bearing the MUDD trademark for sale. Complainant submitted a copy of the corresponding assignment agreements. The Respondent obtained the domain name registration for <muddgirls.com> on or about August 17, 2005. On August 30, 2005, the website associated with the disputed domain name showed a search engine, sponsored links and related categories links to, inter alia, “Save on Mudd Footwear”, featuring shoes and boots through Gotham City at "www.shopgco.com?b=Mudd”; Life Stride Footwear at “www.shoemall.com”; Buy Mudd Products at “www.drugstore.com”; Naturalizer Shoes at “buydesigners.com/shoe_store.html”; Mudd Shoes, Mudd Sandals, Mudd Pants, Comfortable Dress. The website associated to Mudd Pants in turn showed sponsored links and related categories links to Mudd Jeans, Cargo Pants, Pull on Pants, UFO
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Pants, etc. The website associated to the link of Mudd Jeans in turn showed sponsored links and related categories links to Mudd at JCPenney at “www.jcpenney.com”, Official Abercrombie Site at “www.abercrombie.com”, Deals on Brand Name Jeans at “www.personalshopper.com”, Jeans at Esprit at “www.espritshop.com”, etc. Complainant submitted copies of the corresponding print outs of the website associated with the disputed domain name and of some of the websites associated to such sponsored links and related categories links. Parties’ Contentions A. Complainant

5.

Complainant’s contentions may be summarized as follows: The disputed domain name <muddgirls.com> is confusingly similar and virtually identical to its inherently distinctive and well known MUDD trademark and its registered domain name <muddjeans.com>. Complainant and its predecessor have been continuously using the MUDD trademark since at least September 1995, in connection with a variety of goods, such as apparel, including jeans and shoes, leather goods and accessories. Through its continuous, extensive and prolonged use of the trademark MUDD, the Complainant has developed substantial goodwill, value and recognition as a source identifier for high quality apparel, shoes, jewelry and leather goods. The MUDD trademark is famous for high quality apparel, shoes, jewelry and leather goods in the United States of America, Europe, Latin America and Asia. Through its website located at “www.muddjeans.com” Complainant offers its goods bearing the MUDD trademark for sale. Based on Complainant’s registration and use of the MUDD trademark throughout the world, Respondent had constructive notice that Complainant owned the MUDD trademark prior to the date on which Respondent registered the disputed domain name (i.e. on August 17, 2005). Respondent has no relationship with Complainant, and the latter has never licensed or granted permission to Respondent to use the MUDD trademark or a domain name incorporating such trademark or variations thereof. To Complainant’s knowledge, Respondent has never been known by or operated a business under the MUDD trademark or the disputed domain name. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Respondent’s sole intent in using the disputed domain name is to enhance its commercial gain by misleadingly diverting consumers and/or tarnishing Complainant’s MUDD trademark. Respondent registered the disputed domain name and uses it in bad faith. Respondent acquired the disputed domain name primarily for the purpose of renting space (by virtue of providing links on its website) to Complainant’s
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competitors, thus disrupting and harming Complainant’s business. Respondent uses the disputed domain name to steer consumers utilizing the internet to links that take consumers to other jeans, apparel, shoes and accessories manufacturers’ websites, including, inter alia, shoes described as Mudd offered through Gotham City Online, Life Stride Footwear, Naturalizer Shoes, Paris Blues, Esprit, Abercrombie and Fitch. Thus, purchasers are likely to purchase competitors’ goods believing they are Complainant’s goods. None of the links at the disputed domain name website direct consumers to any official website of the Complainant. Respondent’s use of the disputed domain name website is likely to cause confusion or mistake or deception of purchasers as to the source of origin of the goods offered through such website. Respondent’s activities constitute misappropriation of the Complainant’s trademark, that is, an unauthorized use of a confusingly similar variation thereof, and misrepresentation by using a confusingly similar variation of Complainant’s trademark to lure consumers to an e-commerce site that, in fact, does not sell Complainant’s products. Respondent’s activities are designed to disrupt and harm Complainant’s business by diverting potential MUDD jeans, apparel and accessories consumers to Complainant’s competitors, thereby inducing consumers to purchase other brand and non-brand name competing products. Respondent’s bad faith in registering the domain name at issue is clearly evidenced by the use to which it has put that domain name, coupled with Complainant’s prior registration and longstanding and continuous use of the MUDD trademark, for which Respondent is deemed to have constructive notice. Respondent

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B.

The Respondent did not reply to the Complainant’s contentions.

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”. The burden for the Complainant, under paragraph 4(a) of the Policy, is to show that: 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 (ii) the Respondent has no legitimate rights or interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Preliminary Issue (i)

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As a preliminary issue this Panel must determine whether or not the Respondent has been named correctly in this proceeding. In the registrar’s verification response to the Center, DomainDoorman, LLC confirmed that the registrant of the domain name at issue is “Unasi Inc.” and provided its mailing address, phone number and email address. However, this Panel noticed that in the registrar’s whois report provided by the Complainant as Exhibit A of the Amended Complaint, the registrant of the domain name at issue appears as “Unasi Inc. (MUDDGIRLS-COM-DOM)”, while the administrative and technical contacts appear just as “Unasi Inc.”, all of them with the same mailing address, phone number and email address and which coincide with those provided for the Respondent in such registrar’s verification response. In the absence of a Response, the above information leads to believe that “Unasi Inc.” and “Unasi Inc. (MUDDGIRLS-COM-DOM)” are but one and the same entity. Thus this Panel is satisfied that Respondent has been correctly named in this proceeding. B. Identical or Confusingly Similar

It is undisputed that the Complainant is the holder of many MUDD trademark registrations in numerous jurisdictions around the world, including the United States of America and Panama, and that the Complainants’ products are well known internationally under such trademark. The disputed domain name entirely incorporates the MUDD trademark, adding the word “girls”. The addition of such generic word is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior panel decisions support this Panel’s view (Cfr. Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; OkiData Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102). Therefore, this Panel finds that the domain name <muddgirls.com> is confusingly similar to Complainant’s MUDD trademark. C. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate rights or interests in respect of the disputed domain name. Complainant asserts that it has no relationship with Respondent, and that it has never licensed or granted permission to Respondent to use the MUDD trademark or a domain name incorporating such trademark or variations thereof. Likewise, Complainant asserts that, to its knowledge, Respondent has never been known by or operated a business under the MUDD trademark or the disputed domain name. As regards the above-noted discrepancy in Respondent’s name (see section 6, subsection A above), the fact that Respondent’s name appears in the registrar’s whois report as “Unasi Inc. (MUDDGIRLS-COM-DOM)” is not, by itself, sufficient to establish that the Respondent is in fact commonly known by the disputed domain name. Further, nothing warrants that the Respondent’s name shown in said whois report fully corresponds to the real name of Respondent (See Scanomat A/S v. Scanomat Administrator Domain, WIPO Case No. D2004-0932; Weber & Weber GmbH & Co. KG v. Kim, Hyoungil, WIPO Case No. D2004-0273). In light of the overall evidence, it
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seems that Respondent might have added the element “(MUDDGIRLS-COM-DOM)” to its name as a scheme to convey a false impression of “a/k/a” or “d/b/a”. Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links and related categories links with the name of products competing with those of the Complainant and showing the MUDD trademark followed in each instance by the words shoes, pants and jeans, with the clear purpose of diverting internet users through such links to other websites unrelated to the Complainant’s official website and selling products similar to the Complainant’s. Such use of the MUDD trademark by the Respondent does not establish legitimate rights or interests of Respondent in the disputed domain name. (Cfr. Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644; Amanresorts Limited v. WWWEnterprise, Inc., WIPO Case No. D2005-0384; Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170; Société des Hôtels Méridien v. LaPorte Holdings Inc., WIPO Case No. D2004-0849). In view of the above, and in the absence of any explanation from the Respondent as to why it might consider it has a right or legitimate interest in using the word “MUDD”, albeit with a generic part or element, it is difficult to imagine how the Respondent might have a right or legitimate interest to use MUDD as part of the disputed domain name. Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the domain name at issue. D. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the domain name is in bad faith. Taking into consideration the nature of the Complainant’s business, the registration of the MUDD trademark in the United States of America, Panama and other countries around the world, and the prolonged use of the MUDD trademark, it is clear that Respondent should have been fully aware of the existence of the Complainant’s trademark at the time it obtained the registration of the disputed domain name. Further, the Respondent uses the website associated to the disputed domain name to show sponsored links that direct consumers to websites featuring products competing with Complainant’s. This means the Respondent had enough information to know what is suggested by the MUDD trademark, that such conduct only suggests bad faith in registering and using the disputed domain name. (See, Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644: “It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name <internetexplorer.com> with sponsored links to competitors.”). The use of the disputed domain name for a website that shows sponsored links with the name of products competing with those of Complainant, and is used to indirectly market products of the Complainant’s competitors, constitutes an improper use of Complainant’s mark and is evidence of the Respondent’s bad faith (See Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170: “the sole use of the disputed domain name to divert traffic to a site providing sponsored links of various commercial
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companies is indicative of bad faith”; Medco Health Solutions, Inc. v. Digi Real Estate Foundation; WIPO Case No. D2005-0216: “Respondent is attempting to trade on Complainant’s reputation and goodwill by offering competing online pharmacy services through sponsored links.”) In light of the above, this Panel considers that Complainant has established the bad faith of Respondent in registering and using the disputed Domain Name in accordance with paragraph 4(b)(iv) of the Policy.

7.

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

___________________________________ Gerardo Saavedra Sole Panelist Date: October 27, 2005

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