The Complainant is Munchkin, Inc. of California, United States of America ("United States"), represented by Lathrop & Gage LLP, United States.
The Respondent is brosecowas of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 15, 2014. On July 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 July 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2014. An informal communication from the Respondent was filed with the Center on July 17, 2014. The Center accepted this communication as Response.
The Center appointed Andrea Mondini as the sole panelist in this matter on August 13, 2014. 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 Respondent registered the Disputed Domain Name on November 13, 2013.
The Complainant designs and manufactures products for babies and their parents and sells these products globally, including in the United Kingdom. It owns several trademark registrations for the word mark MUNCHKIN including United States trademark registrations and the Community Trademark registrations for baby products. These trademark registrations were filed before the Respondent registered the Disputed Domain Name.
The Complainant owns the domain name which was created on November 21, 1998. 5. Parties' Contentions A. Complainant
The Complainant contends:
- that it has used its trademark MUNCHKIN in connection with its baby products since 1992 and that as a consequence of its advertising investment this mark has become very well known;
- that it has been using its domain name for many years;
- that the Disputed Domain Name incorporates the Complainant's MUNCHKIN mark exactly and in its entirety, the only difference being the addition of a hyphen and the word "baby";
- that no active website has ever been nor is currently associated with the Disputed Domain Name;
- that the address provided by the Respondent when registering the Disputed Domain Name is fictitious;
- that the Respondent is not and has never been affiliated with the Complainant and has never received the Complainant's permission to use its trademarks;
- that the Respondent is using the Disputed Domain Name to perpetrate fraud by using the e-mail address "[…]@" to send emails stating that the Complainant is looking for distributors, thereby purporting to be the Complainant and providing a link to the Complainant's legitimate website. Once a recipient replies to such emails, the Respondent sends additional emails where it solicits funds from the recipient for a start-up order;
- that the primary purpose of the Respondent's registration of the Disputed Domain Name is to obtain access to an e-mail address that the Respondent can use to perpetrate fraud because, due to its similarity to the Complainant's MUNCHKIN mark, it misleads others into believing that it belongs to the Complainant;
- that the Respondent has attempted to defraud at least twenty persons by using this scheme;
- that the Respondent did not answer a cease and desist letter sent by the Complainant;
- that the Disputed Domain Name is confusingly similar to the Complainant's trademark;
- that the Respondent has nor rights or legitimate interest in the Disputed Domain Name; and
- that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent only filed a confirmation of receipt on July 17, 2014, and an email stating "We have received the email as well and have had direct contact with Munchkin, note that there is also another munchkin ([…]@.au) that sells beddings and is not affiliated to Munchkin Inc. We are looking to changing our name and closing this email account officially on the 31st on [sic] July".
The Respondent did not otherwise respond to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following to have the Disputed Domain Names transferred to it:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has shown that it holds trademark rights in the word mark MUNCHKIN in the United States and in the European Community for baby products. The Complainant has also shown that the registration of these trademarks predates the registration of the Disputed Domain Name.
The Disputed Domain Name incorporates the MUNCHKIN trademark. In the Disputed Domain Name, MUNCHKIN is the distinctive element, whereas the element "baby" is a generic term. The adding of generic terms to the Complainant's trademark does not diminish the likelihood of confusion (ACCOR v. VVNW Inc.,WIPO Case No. D2005-0026). On the contrary, the likelihood of confusion can rather be considered as aggravated because the term "baby" is descriptive for the baby products goods marketed by the Complainant in relation to its trademarks (see ACCOR v. VVNW Inc.,WIPO Case No. D2005-0026, and Sodexho Alliance v. Entredomains, Inc.,WIPO Case No. D2002-1001).
The Panel thus finds that the Complainant established that the Disputed Domain Name is confusingly similar to the Complainant's trademark MUNCHKIN. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the Respondent. Therefore, the common view is that paragraph 4(c) of the Policy shifts the burden of proof to the Respondent to come forward with evidence of rights or legitimate interests in the Disputed Domain Name. However, the Complainant has to make a prima facie showing indicating the absence of such rights or interests. See, e.g. Document Technologies Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Complainant has shown that there exists no relationship between the parties that would give rise to any license, permission, or authorization by which Respondent could own or use the Disputed Domain Name.
The Respondent had the opportunity to demonstrate that it has any rights or legitimate interests in the Disputed Domain Names, but it failed to do so. Even if Respondent's contention were true that "there is also another munchkin ([…]@.au) that sells beddings and is not affiliated to Munchkin Inc.", this would by no means establish Respondent's own rights or legitimate interests in the Disputed Domain Name. Consequently, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including (iv) where a domain name is "used to deliberately attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location" or (iii) where a domain name is registered "primarily for the purpose of disrupting the business of a competitor".
The Complainant has shown that the Respondent is using the Disputed Domain Name for fraudulent purposes by using the e-mail address "[…]@" to send emails stating that the Complainant is looking for distributors, purporting to be the Complainant and providing a link to the Complainant's legitimate website. The evidence filed by the Complainant shows that once a recipient replies to such emails, the Respondent sends additional emails where it solicits funds from the recipient for a start-up order. The Panel finds that this evidence shows that the primary purpose of the Respondent's registration and use of the Disputed Domain Name is to obtain and use for fraudulent purposes an e-mail address that the Respondent can use to mislead others into believing that it belongs to the Complainant.
Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrea Mondini
Sole Panelist
Date: August 14, 2014
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