CPR Institute for Dispute Resolution
File Number: CPR-05-18
Domain Names:
www.muddcorp.com
www.muddllc.com
www.muddllp.com
www.bmudd.com
Registrar: Schlund+Partner AG
COMPLAINANT
MUDD (USA), LLC
1407 Broadway, Suite 2004
New York, NY 10018
vs.
RESPONDENT
Oneandone, Private Registration, 1&1 Internet, Inc.
701 Lee Road, Suite 300
Chesterbrook, PA 19087
Administrative Panel: John Fleming Kelly, Esq.
PROCEDURAL HISTORY
The Complaint in this matter was filed with CPR Institute for dispute Resolution ("CPR") on November 29, 2005. A Response was due on December 21, 2005; however, no response has been received. The Arbitrator was appointed on January 5, 2006 pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Rules for UDRP ("the Rules") promulgated by the Internet Corporation for Domain Names and Numbers (ICANN).
Paragraph 5(e) of the Rules provides that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. The Panel is not aware of the existence of any such exceptional circumstance, and therefore will decide the dispute in accordance with the Rule.
CONTROLLING UDRP PROVISIONS
Paragraph 4.a. of UDRP requires a complainant to prove that each of the following three elements is present:
- the domain name(s) at issue are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the respondent has no rights or legitimate interests in respect of the domain name(s) at issue; and
- the domain name(s) at issue have been registered and are being used in bad faith.
Upon a careful study of the written record as filed by the parties, and consideration of UDRP and the Rules, the Arbitrator finds as follows:
THE ELEMENTS EXAMINED AGAINST THE RECORD
IDENTITY/ CONFUSING SIMILARITY
Complainant's domain name is MUDDJEANS.COM. Complainant's trademark, MUDD, has been registered by Complainant or its predecessors in interest since 1995 in the United States and elsewhere in the world under a large number of Registrations in various international classes relating to a wide variety of women's and girls' apparel and accessories.
Respondents' domain names at issue, muddcorp.com, muddllc.com, muddllp.com, and bmudd.com, are clearly not identical with the domain name of Complainant. Nevertheless, these names are similar to MUDDJEANS.COM. Moreover, the additions to the word "mudd" which Respondent has added do not remove confusion from that similarity. The letters which Respondent has added in three instances, "corp", "llc" and "llp" are abbreviations for different forms of business entities authorized by law. These abbreviations tell the reader the type of structure of a business, but tell nothing about what the organization does. The MUDD trademark is so widely recognized that a person seeing one or more of these three domain names could easily be confused into thinking that MUDD had changed the form of its organization, but that the website would still sell MUDD jeans and other apparel. While to the knowledge of the Panel the addition of the letter "b" has no legal significance similar to the additions to the other three names, neither does the addition clear up any confusion.
In another dispute initiated by this same Complainant, Complainant secured the transfer of the domain name www.muddproducts.com because the Panel in that case held that the name was confusingly similar to Complainant's trademark. Mudd, USA, LLC v. Unasi, Inc., WIPO Case No. D2005-0591. pg. 4. Certainly the confusing similarity is all the more severe in this dispute, where only the legal symbols or the sole letter "b" has been added.
Panel finds that Respondents' domain names are confusingly similar.
RIGHTS AND LEGITIMATE INTERESTS
Complainant affirms that it has no relationship with Respondent and has never licensed or granted permission [t]o Respondent to use the MUDD mark or domain name incorporating that mark or variations thereof. Complainant also states that to its knowledge Respondent has never been known by or operated a business under the MUDD mark or the domain names in question. Nor, Complainant asserts, is Respondent making a legitimate noncommercial or fair use of the domain names.
The Panel finds that the Respondent does not have any rights or legitimate interests with respect to the domain names at issue.
BAD FAITH
Complainant asserts that Respondent's unauthorized use of a confusingly similar variation of Complainant's trademark constitutes misappropriation of Complainant's trademark. Further, Complainant asserts that these activities lure consumers to an e-commerce site that does not sell Complainant's products, resulting in misrepresentation. Finally, Claimant asserts that Respondent's bad faith in registering the domain names in question is clearly evidenced by the use to which these names have been put.
The Panel finds that the domain names at issue have been registered and are being used in bad faith.
CONCLUSION
In view of the above findings, the Administrative Panel concludes that the Complainant has met the three elements required under Paragraph 4.a. of UDRP.
REMEDY
Complainant's request that the domain names www.muddcorp.com, www.muddllc.com, www.muddllp.com and www.bmudd.com be transferred to Complainant is granted and so ordered.
January 13,2006
In the absence of a response, I conclude that the registered domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
RIGHTS AND LEGITIMATE INTERESTS
Complainant alleges that Respondent has no rights or legitimate interests with respect to the domain name at issue.
UDRP Paragraph 4(c) provides that Respondent's rights or legitimate interests in a domain name may be demonstrated, without limitation, by showing that (a) before notice to Respondent of the dispute, Respondent has used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (b) Respondent has been commonly known by the domain name; or (c) Respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has submitted no response alleging any rights or legitimate interests with respect to the domain name at issue.
In the absence of a response, I conclude that Respondent does not have rights or legitimate interests with respect to the domain name at issue.
BAD FAITH
Complainant alleges that Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the UDRP provides that indications of bad faith include, without limitation, (a) registration for the purposes of selling, renting or transferring the domain name to the Complainant for value in excess of Respondent's cost; (b) a pattern of registration in order to prevent Complainant from reflecting the mark in a corresponding domain name; (c) registration for the primary purpose of disrupting the business of a competitor; or (d) an intentional attempt to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's web site or location, or of a product or service on Respondent's web site or location.
Complainant alleges that Respondent has acquired the domain name primarily for the purpose of renting space to Complainant's competitors. Complainant alleges that Respondent provides links on its website www.mud~irlies.com to Complainant's competitors' websites, including Levi's Jeans, Seven for all Mankind Jeans, Eddie Bauer Jeans and other apparel manufacturers who market and sell products identical to those marketed and sold by Complainant.
When I entered www.mudqirlies.com in the browser on my computer, the browser opened a website called www.mudd~nirlies.com, which showed women in various degrees of undress, covered in mud. I did not see links to websites of Complainant's competitors. Nevertheless, in the absence of a response, I must accept Complainant's allegation that the website www.mudnirlies.com did, at one time, include links to websites of Complainant's competitors.
Complainant alleges that (a) consumers are likely to purchase competitors' goods, believing they are Complainant's goods, thereby resulting in a loss of sales to Complainant; (b) a consumer who wishes to purchase MUDD jeans or other MUDD products and visits the www.mudgirlies.com website in error may purchase products under the mistaken belief that those products are MUDD products or are otherwise associated with Complainant; and (c) Respondent's activities are designed to disrupt and harm Complainant's business by diverting potential consumers of MUDD jeans and other MUDD products to Complainant's competitors.
I generally find Complainant's allegations difficult to believe. An ordinary consumer would be unlikely to associate goods sold under trademarks of several competitors with goods sold under the MSJDD trademark just because they are linked to a website called www.mudnirlies.com. Complainant has not presented any actual pages of Respondent's website that might give a clearer picture of the manner in which the goods might be confused with those of Complainant.
I can imagine a scenario in which a consumer does a search of the term "mudd jeans" or "mud jeans", looking for Complainant's products, and that this search yields a high ranking for Respondent's website. The consumer might go to Respondent's website and then decide to buy the products of a competitor rather than those of Complainant. While this may disrupt Complainant's business in some small way, it does not constitute "disrupting the business of a competitor" under the UDRP. Claimant has made no allegation that Respondent is a competitor of Claimant.
Arguably, however, such a use of the website might constitute bad faith under the UDRP as "an intentional attempt to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's web site or location, or of a product or service on Respondent's web site or location." The commercial gain may have come from the linking fees.
Respondent has apparently removed the website www.mudnirlies.com. An attempt to reach that website now resolves to another website called www.muddynirlies.com. In the absence of a re- , sponse, I am inclined to believe that Respondent made this change in anticipation of this dispute, which may be an acknowledgment that Respondent was acting in bad faith.
I therefore conclude that Respondent did register and use the domain name in bad faith, as that term is defined in the ICANN Policy.
CONCLUSION
In light of the findings above that (a) the registered domain name is identical or conhsingly similar to Complainant's protected mark; (b) Respondent does not have rights or legitimate interests with respect to the domain name at issue; and (c) Respondent did register and use the domain name in bad faith, as that term is defined in the ICANN Policy, I find in favor of Complainant.
REMEDY
Complainant's request to transfer the domain name MUDGIRLIES.COM is hereby GRANTED. The domain name shall be transferred to Complainant.
