CPR Institute for Dispute Resolution
File Number: CPR-0609
Domain Name: missmudd.com
Registrar: Intercosmos Media Group, Inc. d/b/a Directnic.com
COMPLAINANT
MUDD (USA), LLC
1407 Broadway, 29th Floot
New York, NY 10018
v.
RESPONDENT
Doug Du Plessis
Echoes Business Solutions, Inc.
P.O. Box 6222
Galena, IL 61036
Administrative Panel: Lynda M. Braun, Esq.
PROCEDURAL HISTORY
The Complaint was filed with CPR Institute for Dispute Resolution ("CPR") on February 27, 2006. In accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") and paragraphs 2(a) and 4(a) of the Rules for the UDRP (the "Rules") promulgated by the Internet Corporation for Assigned Names and Numbers, CPR formally notified the Respondent of the Complaint. In accordance with the Rules, paragraph 5(a), the due date for a response was March 20, 2006. The Respondent did not submit any response. Accordingly, CPR emailed the Respondent a letter of nonresponse on March 27,2006, informing him that a panel would he appointed pursuant to UDRP Rule 6(b) no later than March 27, 2006. CPR appointed Lynda M. Braun as the sole panelist in this proceeding on March 27, 2006 (hereinafter refened to as the "Panel"). The Panel has accepted the appointment and submitted a declaration of impartiality and independence, as required by CPR and UDRP Rule 7.
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 on the Complaint. The Panel finds no exceptional circumstances here and will, therefore, decide the dispute based on the Complaint and exhibits attached thereto.
FACTUAL BACKGROUND
The Complainant is a limited liability company whose principal place of business is in New York City. Complainant has federal registrations for the trademark MUDD in numerous international classes and has used that trademark continuously in commerce
since as early as September 1995 in the United States and elsewhere throughout the world. Moreover, Complainant has invested substantial sums of money in advertising and promoting its brand, for which it has acquired substantial good will and recognition as a source identifier for apparel, jewelry and leather goods. In addition to the sale of its products in brick and mortar establishments, Complainant also advertises and offers its products for sale through its web site at www.muddjeans.com.
DISCUSSION AND FINDINGS
To prevail in a UDRP proceeding, a complainant must prove each of the following three elements:
- the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interest in respect of the domain name at issue; and
- the domain name at issue has been registered and is being used in bad faith.
Identical or Confusingly Similar
First, Complainant must prove that the Domain Name is identical or confusingly similar
to Complainant's trademark. (UDRP Policy, paragraph 4(a)(i)).
The only differences between the disputed Domain Name and Complainant's MUDD
mark lie in the addition of the word "miss" and the inclusion of the generic top-level
domain ".com," It is generally accepted that the addition of ".com" in no way
distinguishes a domain name which otherwise wholly incorporates another's trademark.
Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (finding
As for the appending of "miss" to the MUDD mark, it is well established that the
addition of generic words to a mark does nothing to change an otherwise identical or
confusingly similar domain name. PRL USA Holdings, Inc. v. Unasi Management Inc.,
WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing
similarity of domain names and trademarks); International Organization for
Standardization IS0 v. Quality Practitioners Institute and Website Pros, Inc. and
Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form
a domain name is insufficient to dispel confusing similarity). As argued in its
Complaint, the Complainant is no stranger to third parties appending a word to its
trademark in an attempt to confuse the public, and these domain names were deemed
confusingly similar to Complainant's mark. See Mudd (USA), LLC v. Unasi, Inc.,
WIPO Case No. 02005-0591; Mudd (USA), LLC v. Unasi, Inc., WIPO Case No.
02005-0727; Mudd (USA), LLC v. Strickland Drilling Fluids, CPR-05-22.
The Panel therefore concludes that the disputed Domain Name - missmudd.com - is
confusingly similar to Complainant's MUDD mark.
Rights or Legitimate Interest
The Complainant is also required to prove that Respondent has no rights or legitimate
interest in respect of the Domain Name. (UDRP Policy, paragraph 4(a)(ii)).
Once a complainant establishes that a respondent's domain name is identical or
confusingly similar to complainant's mark, and that complainant has not authorized
respondent to use the mark, the burden shifts to respondent to establish some right or
legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. Sony.net,
WIPO Case No. D2000-1074. In light of Respondent's default, the Panel presumes that
Respondent has no such rights or legitimate interest.
The Respondent's default notwithstanding, there is no evidence in the record that
Respondent is in any way associated with Complainant, that Respondent is now or was
ever known by missmudd.com, or that Respondent has other authority or permission to
use Complainant's mark. Furthermore, by not submitting a response, Respondent has
failed to invoke any other circumstance that might demonstrate, pursuant to paragraph
4(c) of the UDRP Policy, that it holds some right or legitimate interest in the disputed
Domain Name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323; see
also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-
1563 (respondent's default alone sufficient to conclude that it had no rights or
legitimate interest in the domain name).
Moreover, Respondent's use of the Domain Name to redirect unsuspecting internet
users to click-through advertisements and sponsored links present on missmudd.com,
including to those competing with Complainant, fails to constitute a bona fide
commercial offering of goods and services under the contested Domain Name. Such
use certainly does not constitute a legitimate non-commercial or fair use without any
intent either for commercial gain, or to mislead or divert consumers or tarnish the
trademark at issue. See MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-
1204.
As such, the Panel finds that the Respondent has no rights or legitimate interest in the
disputed Domain Name. Accordingly, the Complainant has proven paragraph 4(a)(ii)
of the UDRP Policy.
Registered and Used in Bad Faith
The Complainant must additionally establish that the disputed Domain Name has been
registered and is being used in bad faith (UDRP Policy, paragraph 4(a)(iii)). Based on
the record presented, the Panel concludes that Complainant has proffered sufficient
evidence of had faith.
First, the Respondent's knowledge of the Complainants' mark when the Respondent registered the Domain Name, as the record evidence demonstrates, supports a finding of registration in bad faith. As the undisputed evidence set forth in the Complaint shows that the Complainant owns numerous U.S. trademark registrations in various international classes, aside from multiple international trademark registrations in many countries around the world, the Panel infers that the Respondent was well aware of the Complainant's mark hut chose, in spite of such knowledge, to register missmudd.com with the intent of causing consumer confusion and financially benefiting from the goodwill inherent in that well known mark. Such conduct is a demonstration of bad faith. See J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054.
The Panel further infers the Respondent's had faith intent from the Respondent's lack of response to the Complaint. See Awesome Kids LLC and/ or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. 02001-0210.
Perhaps the most blatant demonstration of Respondent's bad faith, however, is the fact
that Respondent provides links on its web site to Complainant's competitors' web sites
- other apparel manufacturers that market and sell the identical products as
Complainant. Diverting traffic in this manner with the result that consumers searching
for Complainant may land on a competitor's site inadvertently, but then decide to
purchase from that manufacturer because it has taken an interest in the goods offered is
the epitome of bad faith. Indeed, the foregoing is known as intial interest confusion in
U.S. trademark law and is actionable. See Micro Electronics, Inc. v. J Lee, WIPO Case
No. 02005-0170 (diversion of traffic evidence of bad faith). Moreover, the diversion
of traffic to another site trades on the good will of the mark owner, creates a mistaken
belief that the mark owner condones the conduct or somehow is affiliated with the other
site and/or gives the impression to consumers that the products from the site with the
confusingly similar Domain Name are MUDD products or are otherwise associated
with the Complainant. This, too, demonstrates bad faith.
Given the above facts and circumstances, the Panel finds that Respondent has registered
and is using the Domain Name at issue in bad faith.
DECISION
For all the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP Policy and 15 of the Rules, the Panel orders that the Domain Name missmudd.com be transfened to the Complainant.
