CPR Institute for Dispute Resolution
File Number: CPR-05-24
Domain Name: www.mudcaps.com
Registrar: Schlund+Partner AG
COMPLAINANT
MUDD (USA), LLC
1407 Broadway, Suite 2004
New York, NY 10018
v.
RESPONDENT
Jeremy Woytsek
(Street Unknown)
Minneapolis, MN 55415
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 from Respondent was due on December 19, 2005, but CPR advises that 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 Arbitrator is not aware of the existence of any such exceptional circumstances, and will therefore decide the dispute in accordance with the Rule.
CONTROLLING UDRP PROVISIONS
UDRP Paragraph 4.a. requires a complainant to prove that each of the following three elements is present:
- the domain name at issue is 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 at issue; and
- the domain name at issue has been registered and is being used in bad faith.
Upon a careful study of the complaint, and consideration of UDRP and the Rules, the Panel 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. Neither Complainant nor Complainant's predecessors have ever abandoned or discontinued using the MUDD trademark.
Respondent's domain name at issue, [www.mudcaps.com] was registered by or transferred to Respondent on August 15, 2005. This domain name is not identical with the domain name of Complainant. There is, however, a similarity between the [domain name of Respondent] and that of Complainant. Respondent's domain name adds the word "caps" to the word "mud". As Complainant points out, the term "mud" is the phonetic equivalent of Complainant's trademark MUDD.
Moreover, the word "caps" can be the plural of "cap", and the definition of "cap" includes head covering. Webster's New Collegiate Dictionary. The Mudd trademark is associated with articles of clothing. Thus a consumer searching the internet for articles of clothing for women and girls and bearing the MUDD trademark could be confused and misled by seeing the similar domain name "mudcaps".
"Caps" is a word covering a specific type of apparel, just as the word "jeans" defines another type of apparel. It is more specific than the word "products". Yet, in a recent case Complainant secured transfer of the domain name www.muddproducts.com Mudd, USA, LLC v. Unasi, Inc., WIPO Case No. D2005-0591, pg. 4. The Panel in that case held that the domain name was confusingly similar to Complainant's trademark. If the generic word "products" can be ruled to result in a confusing similarity, it is reasonable to reach the same conclusion with respect to a particular item of clothing.
The Panel finds that Respondent's domain name is confusingly similar to that of Complainant.
RIGHTS AND LEGITIMATE INTERESTS
Complainant states that it has no relationship with Respondent and has never licensed or granted permission to Respondent to use the MUDD mark or a domain name incorporating that mark or variations thereof. Complainant further states that Respondent is not making a legitimate or fair use the domain name at issue, but rather that Respondent's intent is to enhance its commercial gain by misleadingly diverting consumers and/ or tarnishing Complainant's MUDD trademark. Complainant further states that, to its knowledge, Respondent has never been known by or operated a business under the MUDD mark of the dispute[d] domain name.
The Panel accordingly finds that Respondent has no rights or legitimate interests in the domain name at issue.
BAD FAITH
Complainant alleges that Respondent has acquired the domain name primarily to rent space, by providing links, to Complainant's competitors, and that consumers are likely to purchase competitors' goods, believing they are Complainant's goods, thereby resulting in loss of sales by Complainant. The links which Respondent provides take consumers to the websites of competitors who market and sell the identical products as Complainant. Such mistaken purchase of competitors' goods, with the mistaken belief that the goods are Complainant's goods, result in a loss of sale to Complainant.
These activities of Respondent are also designed, Complainant alleges, to disrupt and harm Complainant's business by driving potential [buyers of] "MUDD" Jeans and other "MUDD" Products to competitors, thereby inducing consumers to purchase other brand and non-brand jeans and products. Because of this confusion engendered by Respondent, Complainant's valuable goodwill with respect to its MUDD trademark is at the mercy of Respondent.
Complainant also states that these activities of Respondent constitute misappropriation of Complainant's trademark and misrepresentation, and that Respondent had constructive notice that Complainant owned the MUDD mark prior to the date upon which Respondent registered its domain name.
The Panel finds that the record supports a conclusion that the domain name at issue has been registered and is 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 the Rules.
REMEDY
The remedies available to a Complainant's pursuant to any proceeding before an Administrative Panel are limited to the cancellation of the domain name or the transfer of registration to the Complainant. UDRP Paragraph 4.i. Accordingly, and as requested by Complainant, transfer of domain name www.mudcaps.com to Complainant is hereby ordered.
January 17, 2006
