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Mudd (USA), LLC v. Domain Active Pty. Ltd. [2005] GENDND 14 (31 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mudd (USA), LLC v. Domain Active Pty. Ltd.

Case No. D2004-1018

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 Domain Active Pty. Ltd., Clayfield, Australia.

2. The Domain Name and Registrar

The disputed domain name <muddclothes.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2004 for the domain names <muddjean.com> and <muddclothes.com>. On December 3, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification. On December 6, 2004, Fabulous.com 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 administrative, billing, and technical contact. On December 8, 2004, Complainant emailed to the Center an amendment to the Complaint, withdrawing its Complaint regarding the <muddjean.com> domain name. Accordingly, <muddclothes.com> is the only domain name of this proceeding, and is termed “Domain Name” herein for convenience of expression. The Center verified that the Complaint (as amended) 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 December 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2005.

The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on January 17, 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.

4. Factual Background

The Complainant has trademark registrations worldwide for the mark MUDD for various clothing items and accessories (herein termed “Products” for simplicity of expression). In particular, for the United States of America, the Complaint mentions (at pages 7-8 of the Complaint) trademark registration N°. 1,992,148, N°. 2,397,457 and N°. 2,537,262. In particular, for Australia, the Complaint mentions (at page 8 of the Complaint) trademark registration N°. 764324. All of the Complainant’s trademark registrations (listed in the Complaint and exhibits) are collectively termed herein as its “MUDD Marks” for convenience of expression.

The Complainant’s aforementioned trademark registrations predate the registration of the Domain Name.

The Complainant has a domain name registration for <muddjeans.com> and maintains a website (at “www.muddjeans.com”) through which it offers for sale, its products bearing the MUDD trademark.

5. Parties’ Contentions

A. Complainant

The Complainant contends: that the Domain Name is identical or confusingly similar to its MUDD Marks, in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

The Respondent did not respond to the Complaint.

6. Discussion and Findings

One requirement of fundamental due process is that a Respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a Respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, this Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence, in the case file provided by the Center, for this Panel to conclude the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).

Where there is default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint,” and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate.”  Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate.”  Since the Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by the Complainant.

In accordance with paragraph 4(a) of the Policy, to succeed in this UDRP proceeding, the Complainant must prove (A) that the Domain Name is identical or confusingly similar to a trademark in which it has rights, and, (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (C) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn below.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in its MUDD Marks by virtue of their legal status as its registered trademarks and its extensive use of the MUDD Marks, and associated consumer recognition, in association with its products in the United States of America and elsewhere (including Australia, where the Respondent is located).

The Domain Name is substantially similar, if not effectively identical, to the MUDD Marks when considered with Products. The addition of the generic word “clothes” to the word “MUDD”, is not sufficient to distinguish.

The Panel concludes that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has provided no argument or evidence of rights or legitimate interests to counter the Complainant’s assertions on this issue. Respondent does not appear to be known as “mudd clothes” and has been granted no rights by the Complainant. By virtue of the legal status of the MUDD Marks as registered trademarks and the extensive use of the MUDD Marks, and associated consumer recognition in association with products in the United States of American and elsewhere (including Australia, where the Respondent is located), the Complainant concludes by asserting that Respondent has no rights or legitimate interests. The Panel accepts the Complainant’s assertions. The Panel, especially in the absence of the Respondent’s response, considers that the circumstances described in paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, for proof of legitimate interest by the Respondent in the disputed domain name, likely do not exist.

The Panel concludes that the second requirement of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Domain Name was registered and is being used in bad faith. The Panel is satisfied that the Respondent registered the Domain Name with knowledge of the Complainant’s rights in its MUDD Marks and is using the Domain Name to misleadingly divert Internet traffic to its own website that steer consumers utilizing the internet to links which lead to preset searches that take consumers to other clothing manufacturers (some of them being competitors of the Complainant) selling products identical to those of, but not of, the Complainant. This is bad faith under paragraph 4(b)(iv) of the Policy.

The Panel concludes that the third requirement of the Policy is met.

7. Decision

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

Mark Ming-Jen Yang
Sole Panelist

Date: January 31, 2005