CPR Institute for Dispute Resolution
File Number: CPR 0615
Date of Commencement: April 1 1,2006
Domain Name: JMUDD.COM
Registrar: Melbourne IT, Ltd.,
d/b/a Internet Names Worldwide
COMPLAINANT
Name: Mudd (USA), LLC
Address: 1407 Broadway, Suite 2004, New York, NY 10018
Tel: 212-609-6800
Fax: 212-935-1 304
E-mail: gfechter@mccarter.com; mwallach@mccarter.com
vs.
RESPONDENT
Name: Ursula Mitchell
Address: P.O. Box 99800, Emeryville, CA 94662
Telephone: 510-595-2002
Fax: Unknown
E-mail: contact@myprivateregistration.com
Before Thomas M. Pitegoff, Esq., Arbitrator
PROCEDURAL HISTORY
The Complaint in this proceeding was filed with the International Institute for Conflict Prevention & Resolution (CPR) on April 11, 2006. After review for administrative compliance, CPR served the Complaint on Respondent. On May 2, 2006, CPR notified Respondent that Respondent failed to file a timely Response. On May 4,2006, CPR appointed me as Arbitrator 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).
ICANN Rule 5(e) states "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." I know of no exceptional circumstances in this dispute.
Upon the written submitted record including the Complaint and its attachments, I find as follows:
FINDINGS
Respondent's domain name JMUDD.COM was registered with Melbourne IT, Ltd., d/b/a Internet Names Worldwide, on February 4, 2006. In registering the name with Internet Names Worldwide, an ICANN accredited registrar, Respondent agreed to submit to this forum to resolve any dispute concerning the domain names, pursuant to the UDRP.
The UDRP provides, at Paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail:
- Respondent's domain name must be identical or confusingly similar to a trademark or service mark in which complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain name; and
- Respondent's domain name has been registered and is being used in bad faith.
IDENTITY/ CONFUSING SIMILARITY
UDRP Paragraph 4(a)(i) calls for a finding that Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Complainant sells a variety of goods worldwide under the MUDD trademark. The trademark MUDD was registered with the United States Patent and Trademark Office on August 6, 1996, under Registration No. 1992148 for use in connection with jeans, overalls, skirts, shorts and dresses in International Class 25, claiming first use in commerce at least as early as September 1995. Complainant alleges that Complainant and its predecessor have used the trademark MUDD continuously since as early as September 1995 in connection with woman's and girls' apparel and accessories and other goods. The trademark MUDD was registered in the U.S. under Registration No. 2537262 in International Classes 9, 14, 18, 25 and 26 for use in connection with a variety of other goods, with dates of first use in 1998 and 1999. Complainant also uses the MUDD mark abroad and has numerous foreign registrations for this trademark.
Complainant sells MUDD goods through its website MUDDJEANS.COM.
The MUDD trademarks were originally owned by Paper Denim and Cloth, LLC, formerly known as Mudd, LLC ("PD&C"). On May 21, 2004, PD&C assigned to Complainant all of the worldwide MUDD trademark registrations and the goodwill associated therewith. Also on May 21, 2004, PD&C assigned to Complainant the domain name MUDDJEANS.COM.
Viewed as a trademark, the word "mud" is identical to the trademark MUDD. The word "mud" is the first portion of Respondent's domain name MUDGIRLIES.COM.
Complainant alleges that Respondent's domain name JMUDD.COM is identical and confusingly similar to Complainant's domain name, MUDDJEANS.COM and Complainant's trademark, MUDD.
Respondent's domain name JMUDD.COM entirely incorporates the MUDD trademark and adds the letter "J". The addition of the letter "J" does not avoid similarity or confusion.
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.
Complainant alleges that Complainant has never licensed or granted permission to Respondent to use the MUDD mark or a domain name incorporating that mark.
Complainant also alleges that to Complainant's knowledge, Respondent has never been known by or operated a business under the MUDD trademark or the JMUDD domain name. When I entered www.jmudd.com in a browser, the page that appeared had the heading, "This site is under construction." The page allowed for searches of the Internet and indicated that it was hosted by Yahoo.
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.
The web page www.jmudd.com is a placeholder page hosted by Yahoo with the heading, "This site is under construction." The page allows for searches of the Internet. Presumably, these are Yahoo searches, not searches to links with payments to Respondent. The page contains a number of listed links, none of which is specifically for apparel. Complainant alleges that when a user searches for jeans from this web page, he or she is transported to Complainant's competitors' links. Complainant alleges that Respondent has acquired the domain name primarily for the purpose of renting space (by virtue of providing links on its website) to Complainant's competitors. However, Complainant has presented no evidence that the searches permitted on this page include paid links, let alone paid links to competitors. In fact, if one does a search of "Mudd Jeans" from this page, listings of links to websites selling Complainant's products appear. Because the page is clearly hosted by Yahoo and has the prominent heading "This site is under construction," it is not likely that a user will believe that the links are sponsored or affiliated with, or endorsed by, Complainant.
Complainant alleges that Respondent has the domain name "parked", presumably with some bad intention. The domain name was registered on February 4, 2006, which was a mere two months before Complainant commenced this proceeding.
Complainant presented no evidence to the effect that Complainant made any effort to contact Respondent before commencing this proceeding. Accordingly, there is no evidence that Complainant knows Respondent's intended use of the disputed domain name.
The registration of a domain name that contains another party's registered trademark, without more, does not constitute bad faith. Other companies use the mark MUDD in whole or in part in ways that do not compete with Complainant, as a trademark or Google search of the word MUDD indicates.
I therefore do not conclude that Respondent's domain name has been registered or used in bad faith, as that term is defined in the ICANN Policy.
CONCLUSION
In light of the absence of any evidence that Respondent registered and used the domain name in bad faith, as that term is defined in the ICANN Policy, I hereby DENY Complainant's request to transfer the domain name JMUDD.COM.
