The Complainant is Munchkin, Inc. of Van Nuys, California, United States of America, represented by K&G Law LLC, United States of America.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona / Shay Danan of Laval, Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 2, 2018.
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” 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2018. After the transmission of notice of respondent default, an email was received from the Respondent stating that the use of the disputed domain name had been discontinued.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on March 16, 2018. 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 Munchkin, Inc. was founded in 1991 and is a leader in developing innovative products for babies, children and their parents. The company now has seven offices around the world, owns over 180 patents and also owns many registrations for the trademark MUNCHKIN in several countries, including:
United States trademark registration no. 4,529,924 of May 13, 2014 in class 25;
United States trademark registration no. 4,415,282 of October 8, 2013 in classes 9, 11 and 20;
United States trademark registration no. 2,101,757 of September 30, 1997 in classes 8 and 21;
United States trademark registration no. 3,504,842 of September 23, 2008 in class 18;
United States trademark registration no. 3,578,309 of February 4, 2009 in classes 20, 21, 24 and 28;
United States trademark registration no. 3,900,713 of January 4, 2011 in classes 6 and 20;
United States trademark registration no. 4,012,692 of August 16, 2011 in classes 18, 20 and 24 and
United States trademark registration no. 4,010,327 of August 9, 2011 in class 3, among others.
The Complainant’s products are sold via mass merchandisers such as Target and Walmart, A, Toys R Us, Buy Buy Baby and other retailers.
The Respondent registered the disputed domain name on December 6, 2016, that is many years after the Complainant registered the trademark MUNCHKIN.
The disputed domain name is used by the Respondent for the sale of clothing and accessories for infants and children, which means that both parties are in a similar business. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark MUNCHKIN, that the Respondent has no rights or legitimate Interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
Apart from the email of March 5, 2018 in which the Respondent stated the following:
“Please note the use of this domain has been discontinued a few weeks ago. We no longer advertise ourselves as munchkingear.”
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed In relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trademark MUNCHKIN. The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In this case the disputed domain name contains the Complainant’s trademark, MUNCHKIN, in its entirety. Given the parties involvement in the sale of clothing and accessories for infants and children, the addition of the descriptive word “gear” in the disputed domain name rather than providing a sufficient differentiation tends to increase the likelihood of confusion.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement.
The Panel finds that the disputed domain name is identical and confusingly similar to the trademark MUNCHKIN in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or 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
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never granted the Respondent the right to use or register the trademark MUNCHKIN as a domain name or for any other reason.
The Panel notes that the disputed domain name was registered and used by the Respondent to offer for sale goods similar to those of the Complainant many years after the Complainant registered and used the name and trademark MUNCHKIN in connection with the sale of infants and children clothing. In the Panel’s view this cannot be considered a bona fide offering but rather an attempt to capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the disputed domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark MUNCHKIN when it registered the disputed domain name on December 6, 2016.
In fact, on November 16, 2017 the lawyers for the Complainant sent a cease and desist letter to M LLC to advise Respondent of Complainant’s rights in the well-known MUNCHKIN brand and requesting that they “select another mark, and to cease all use of MunchkinGear, Munchkin Boutique, or other designation that includes the formative “MUNCHKIN” for infant and children clothing and accessories”.
In reply, on January 19, 2018 M sent an email answering that their trade name “is composed of two very generic words which are widely used both in this industry and others, furthermore we do not sell identical products as your client…If your client insists on owning our URL it can be discussed but there will be a price tag attached to it.”
In absence of any evidence to the contrary, the Panel considers that the name Munchkingear is not generic, nor has it been widely used in the relevant industry and others, as argued by the Respondent. Furthermore, the Panel considers that both parties sell the same goods: apparel and children’s clothing.
In the light of Respondent’s reply to the cease and desist letter, it is implausible that Respondent was unaware of the Complainant’s trademark MUNCHKIN when it registered the disputed domain name.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
By using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy. 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.
Miguel B. O’Farrell
Sole Panelist
Date: March 21, 2018
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