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Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM) [2005] GENDND 1594 (27 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM)

Case No. D2005-0591

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 Unasi Inc. (MUDDPRODUCTS-COM-DOM), Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name is <muddproducts.com> which is registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2005. On June 9, 2005, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On June 15, 2005, Compana LLC transmitted by email to the Center its verification response informing that the domain name at issue was in redemption period and was not in their whois database. On June 23, 2005, the Complainant requested the suspension of the Administrative Proceeding, which the Center granted until July 26, 2005. A request for information was sent to the Center by Complainant after confirmation of the domain name registration by a third party and with another Registrar during the mentioned redemption period. On July 26, 2005, the Complainant requested the reactivation of the Administrative Proceeding. The Center re-instituted the case and, on July 27, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On July 28, 2005, iHoldings.com Inc. d/b/a DotRegistrar.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. In response to a notification by the Center that the Complaint was administratively deficient, on August 10, 2005, the Complainant filed an Amended Complaint, which expressly states that the allegations set forth therein and its exhibits supersede those set forth in the prior Complaint filed in June 2005. The Center verified that the Complaint together with the Amended Complaint 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 Amended Complaint, and the proceedings commenced on August 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2005.

The Center appointed Gerardo Saavedra as the Sole Panelist in this matter on September 13, 2005. This Panel finds that it was properly constituted. This 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.

Pursuant to paragraph 11 of the Rules, the language of the proceedings shall be English.

4. Factual Background

The Complainant is a company incorporated in Delaware with a principal place of business in New York. Complainant is the assignee of Paper Denim and Cloth, LLC f/k/a Mudd, LLC (“PD&C”).

Complainant supplied a list of trademarks registered around the world, as well as copies of the following trademark registrations for MUDD:

- United States of America, registration No. 2537262, registered in February 2002, stated first use and in commerce July 1998.

- United States of America, registration No. 1992148, registered in August 1996, stated first use and in commerce September 1995.

- Panama, registration No. 94869, application date July 14, 1998.

- Panama, registration No. 120102 01, application date March 19, 2002.

On May 21, 2004, PD&C assigned to Complainant all of the worldwide MUDD trademark registrations and goodwill associated therewith. Likewise, on May 21, 2004, PD&C assigned to Complainant the domain name <muddjeans.com>, where Complainant offers its goods bearing the MUDD trademark for sale. Complainant submitted a copy of the corresponding assignment agreements.

The Respondent obtained the domain name registration for <muddproducts.com> on or about July 14, 2005.

On August 9, 2005, the website associated with the disputed domain name showed a search engine and sponsored links to, inter alia, “Hip Hop Clothing”, “Diesel Denim”, “Diesel Jeans”, “Save on Mudd Footwear”. Complainant submitted copies of the corresponding print outs of such website and of some of the sponsored links’ websites.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

- The disputed domain name <muddproducts.com> is confusingly similar and virtually identical to its inherently distinctive and well known MUDD trademark and its registered domain name <muddjeans.com>.

- Complainant and its predecessor have been continuously using the MUDD trademark since at least September 1995, in connection with a variety of goods, such as apparel, including jeans and shoes, leather goods and accessories.

- Through its continuous, extensive and prolonged use of the trademark MUDD, the Complainant has developed substantial goodwill, value and recognition as a source identifier for high quality apparel, shoes, jewelry and leather goods.

- The MUDD trademark is famous for high quality apparel, shoes, jewelry and leather goods in the United States of America, Europe, Latin America and Asia.

- Through its website located at “www.muddjeans.com” Complainant offers its goods bearing the MUDD trademark for sale.

- Based on Complainant’s registration and use of the MUDD trademark throughout the world, Respondent had constructive notice that Complainant owned the MUDD trademark prior to the date on which Respondent registered the disputed domain name (i.e. on July 14, 2005).

- Respondent has no relationship with Complainant, and the latter has never licensed or granted permission to Respondent to use the MUDD trademark or a domain name incorporating such trademark or variations thereof.

- To Complainant’s knowledge, Respondent has never been known by or operated a business under the MUDD trademark or the disputed domain name.

- Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Respondent’s sole intent in using the disputed domain name is to enhance its commercial gain by misleadingly diverting consumers and/or tarnishing Complainant’s MUDD trademark.

- Respondent registered the disputed domain name and uses it in bad faith.

- Respondent acquired the disputed domain name primarily for the purpose of renting space (by virtue of providing links on its website) to Complainant’s competitors, thus disrupting and harming Complainant’s business.

- Respondent uses the disputed domain name to steer consumers utilizing the internet to links that take consumers to other jeans, apparel, shoes and accessories manufacturers’ websites, including, inter alia, shoes described as Mudd offered through Gotham City Online, Discount Mudd Jeans, Victoria Becham Jeans, Diesel Jeans, Evisu Jeans, Pepe Jeans, Humanity Jeans, Tommy Hilfiger. Thus, purchasers are likely to purchase competitors’ goods believing they are Complainant’s goods.

- Respondent’s use of the “www.muddproducts.com” website is likely to cause confusion or mistake or deception of purchasers as to the source of origin of the goods.

- Respondent’s activities are designed to disrupt and harm Complainant’s business by diverting potential MUDD jeans, apparel and accessories consumers to Complainant’s competitors, thereby inducing consumers to purchase other brand and non-brand name competing products.

- Respondent’s bad faith in registering the domain name is clearly evidenced by the use to which it has put that domain name, coupled with Complainant’s prior registration and longstanding and continuous use of the MUDD trademark, for which Respondent is deemed to have constructive notice.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a Complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable”.

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no legitimate rights or interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed that the Complainant is the holder of many MUDD trademark registrations in numerous jurisdictions around the world, including the United States of America and Panama, and that the Complainants’ products are well known internationally under such trademark.

The disputed domain name entirely incorporates the MUDD trademark, adding the word “products”. The addition of such generic word is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior panel decisions support this Panel’s view (Cfr. Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; PRL USA Holdings, Inc. v. Polo, WIPO Case No. D2002-0148; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

Therefore, this Panel finds that the domain name <muddproducts.com> is confusingly similar to Complainant’s MUDD trademark.

B. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate rights or interests in respect of the disputed domain name.

Further, Complainant asserts that, to its knowledge, Respondent has never been known by or operated a business under the MUDD trademark or the disputed domain name. In this respect, this Panel notices that Respondent’s name as registrant of the disputed domain name appears as “Unasi Inc. (MUDDPRODUCTS-COM-DOM)”, that is, showing the disputed domain name as a part of Respondent’s name. Further, this Panel notices that Respondent’s administrative and technical contacts appear just as “Unasi Inc.”. Having the element “(MUDDPRODUCTS-COM-DOM)” as a part of the Respondent’s name as registrant is not, by itself, sufficient to establish that the Respondent is in fact commonly known by the disputed domain name. Likewise, nothing warrants that the Respondent’s name as registrant fully corresponds to the real name of Respondent (See Scanomat A/S v. Scanomat Administrator Domain, WIPO Case No. D2004-0932; Weber & Weber GmbH & Co. KG v. Kim, Hyoungil, WIPO Case No. D2004-0273). In light of the above-noted discrepancy in Respondent’s name and the overall evidence, it seems that Respondent might have added the element “(MUDDPRODUCTS-COM-DOM)” to its name as registrant as a scheme to convey a false impression of “a/k/a” or “d/b/a”.

Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links with the name of products competing with those of the Complainant, with the clear purpose of diverting internet users through such sponsored links to other websites unrelated to the Complainant’s official website and selling products similar to the Complainant’s.

Such use of the MUDD trademark by the Respondent does not establish legitimate rights or interests of Respondent in the disputed domain name. (Cfr. Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644; Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170; Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078).

In view of the above, and in the absence of any explanation from the Respondent as to why it might consider it has a right or legitimate interest in using the word “MUDD”, albeit with a generic part or element, it is difficult to imagine how the Respondent might have a right or legitimate interest to use MUDD as part of the disputed domain name.

Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the domain name is in bad faith.

Taking into consideration the nature of the Complainant’s business, the registration of the MUDD trademark in the United States of America, Panama and other countries around the world, and the prolonged use of the MUDD trademark, it is clear that Respondent should have been fully aware of the existence of the Complainant’s trademark at the time it obtained the registration of the disputed domain name.

Further, the Respondent uses the website associated to the disputed domain name to show sponsored links to apparel related websites. This means the Respondent had enough information on apparel to know what is suggested in that field by the MUDD trademark, that such conduct only suggests bad faith in registering and using the disputed domain name. (See, Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644: “It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name <internetexplorer.com> with sponsored links to competitors.”)

The use of the disputed domain name for a website that shows sponsored links with the name of products competing with those of Complainant, and is used to indirectly market products of the Complainant’s competitors, constitutes an improper use of Complainant’s mark and is evidence of the Respondent’s bad faith (See Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170: “the sole use of the disputed domain name to divert traffic to a site providing sponsored links of various commercial companies is indicative of bad faith”; Medco Health Solutions, Inc. v. Digi Real Estate Foundation; WIPO Case No. D2005-0216: “Respondent is attempting to trade on Complainant’s reputation and goodwill by offering competing online pharmacy services through sponsored links.”)

In light of the above, this Panel considers that Complainant has established the bad faith of Respondent in registering and using the disputed Domain Name in accordance with paragraph 4(b)(iv) of the Policy.

7. Decision

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

Gerardo Saavedra
Sole Panelist

Dated: September 27, 2005