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 Brzezinska Wioleta of Bergen Op Zoom, the Netherlands, represented by UDRP Legal, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2018, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 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 July 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2018. The Response was filed with the Center on July 26, 2018.
On July 30, 2018, the Complainant sought to file a supplemental filing in reply to the Response. On July 31, 2018, the Respondent filed a reply to the Complainant’s supplemental filing.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 8, 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
According to the Complaint, the Complainant was established the United States in 1991. Based on its United States registered trademarks, the earliest use in commerce in the United States was June 1992 for baby bottles, nipples, pacifiers and teething rings and infants’ and children’s drinking cups. Over time, its range of products appears to have extended significantly to include goods in many International Classes.
Of particular relevance to the present proceeding, the Complainant secured registration in the United States of:
(a) United States Registered Trademark No. 4,529,924 for MUNCHKIN in International Class 25 for infantwear, bodysuits, one-piece underwear, shirts, t-shirts, pants, dresses, skirts, shorts, undershirts, gown creepers, coveralls, hosiery, socks, swaddling clothes, cloth bibs, and hats”. This trademark was registered on May 13, 2014 and claims first use in commerce in the United States on February 3, 2014.
(b) United States Registered Trademark No. 4,735,575 for MUNCHKIN and design (registered in colours) in International Class 25 for “baby bodysuits, infant and toddler one piece clothing; infantwear”. This trademark was registered on May 12, 2015 and claims first use in commerce on the relevant goods on December 31, 2014.
The Complaint includes evidence of numerous other registered trademarks in the United States for MUNCHKIN or the coloured MUNCHKIN and design mark. The earliest of which is Registered Trademark No. 2,252,848 for baby bottles, nipples, pacifiers and teething rings for babies in International Class 10, infants’ and children’s drinking cups in International Class 21 and children’s multiple activity toys, infant’s rattles, toy action figures, and toy vehicles in International Class 28. This trademark was registered on June 15, 1999 and claims first use in commerce in the United States in respect of the class 10 goods on June 30, 1992.
According to the Complaint, the Complainant now has seven offices around the globe and dozens of registered trademarks and over 180 patents worldwide.
According to the Complaint, the Complainant’s products are sold through mass market retailers such as Target, Walmart and Amazon. This is disputed by the Respondent which says that the Complainant sells its clothing products only from its own website.
It is not in dispute that the Respondent registered the disputed domain name on March 22, 2017. Since about that date, the Respondent has used the disputed domain name to resolve to a website offering for sale and selling children’s (or at least baby and toddler) clothing under the name “Little Munchkin Boutique”. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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 applicable. A. Admissibility of Complainant’s Supplemental Filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
The Complainant’s supplemental filing does two things of particular relevance. First, it includes an email from the Respondent on July 2, 2018 in which the Respondent offered to change her domain name. That email appears to have been received on the same day as, but before, the Complainant filed its Amended Complaint.
Secondly, the supplemental filing includes details of the Complainant’s European Union (“EU”) Trademark No. 010160067 for MUNCHKIN which includes goods and services in International Classes 6, 7, 8, 11, 12, 19, 20, 21, 25, 28 and 35. The class 25 goods specified are clothing, socks, hosiery. This trademark is registered from July 28, 2011.
Evidence of an International Registration is also provided. But it does not extend to International Class 25.
As it bears on the fundamental issues in dispute between the parties, the Panel considers it should exercise its discretion to admit the Complainant’s supplemental filing. In the interests of fairness, the Respondent’s supplemental filing filed on July 31, 2018 is also admitted. B. Identical or Confusingly Similar
There is no dispute between the parties that the disputed domain name is confusingly similar to the Complainant’s registered trademarks.
The Complainant also asserts that its brand is well known in the infant and children’s field. That may well be true, especially to the extent that its products are sold in the United States through mass merchandisers such as Target and Walmart. However, the bald assertion is far from sufficient to support a finding that that is the case: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.
Accordingly, the Complainant has established the first requirement under the Policy on the basis of its registered trademarks. C. Rights or Legitimate Interests
It is not in dispute between the parties that there is no association or affiliation between the Complainant and the Respondent. They are completely independent of each other.
The Respondent’s rebuttal of the Complainant’s allegations that she has no rights or legitimate interests in the disputed domain name is to point to the nature of “munchkin” and “little munchkin”. “Munchkin” is of course the name of the inhabitants of a fictional place in L. Frank Baum’s The Wizard of Oz. They are at least usually depicted as small or dwarfish in size. As a result of this and their other characteristics, the Respondent rightly points out the term, and especially the diminutive “little munchkin” is a commonly used term or reference for children especially small children.
Secondly, the Respondent points out that the form she uses “Little Munchkin Boutique” in is very different to the heavily stylised and coloured version used by the Complainant.
Thirdly, the Respondent says, and has provided a sworn statement to this effect, that she adopted the name “Little Munchkin Boutique” without any knowledge of the Complainant or its mark and simply because of its aptness for the nature of her business – providing an online market place for children’s clothing and accessories.
The difficulty with the Respondent’s position is that the Complainant does in fact have an EU Trademark for MUNCHKIN in plain type which directly covers clothing. Whether the Respondent knew of the Complainant and its trademark or not, the provision of goods by reference to an infringing trademark would not usually qualify as a good faith offering of goods or services to qualify as rights or a legitimate interest under the Policy.
It might be arguable that there is no infringement of a common or ordinary word such as “Munchkin” unless the allegedly infringing usage is almost identical. It might also be arguable whether the use of a term such as “Little Munchkin” to indicate the nature of the goods being offered for sale is a non-infringing use even though the use is clearly use in a trademark sense.
It is not necessary, however, to resolve these issues in the present proceeding in view of the conclusions the Panel has reached under the third limb of the Policy. D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant asserts that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights.
It is certainly true that the Respondent adopted her name and registered the disputed domain name long after the Complainant started using its trademark. No specific basis for the Complainant’s claim is made other than the Complainant’s registration of its United States trademarks and its claim that its trademarks are well-known.
As already noted, however, the Respondent has denied any knowledge of the Complainant or its trademark. She says in her sworn statement that she adopted her name because of the nature of her online business – selling small children’s clothing and accessories – and the aptness of the term to describe that business bearing in mind its common usage as a reference to small children.
Given the nature of the terms in question, there is nothing implausible in the Respondent’s claim. This is not a case where the term incorporated into the disputed domain name has significance only because it is the Complainant’s trademark. Although the Complainant claims its trademark is well known, it has not provided any evidence to support a finding that it is so well known that it is likely it came to the Respondent’s notice. The scant material it has provided might support a basis for concluding that its products, or at least its non-clothing products, are distributed nationally in the United States. Even after being notified that the Respondent is located in the Netherlands, the Complainant has made no attempt to substantiate its claim to being well-known there or in other parts of Europe. The Complaint does disclose that the Complainant has “seven offices around the globe” and “over 180 patents and dozens of trademark registrations for the MUNCHKIN® brand worldwide.”
Having regard to the nature of the term “Munchkin” and “little munchkin”, this information falls well short of what is required for the Panel to go behind the Respondent’s denial and infer that the Respondent did know, or is likely to have known, about the Complainant’s trademark when registering the disputed domain name.
In her email dated July 2, 2018 in response to the Complainant’s letter of demand, the Respondent did offer to change the domain name and stop using “munchkin”. That offer was not maintained in the Response. As the Respondent has filed a Response opposing the Complaint, the Panel does not consider it appropriate to apply the approach taken in cases where a respondent has consented to transfer: see WIPO Overview 3.0, section 4.10.
The terms of the Respondent’s email are consistent with her denial of any knowledge of the Complainant or its trademark when adopting the disputed domain name. The Respondent appears to have volunteered it as a consequence of being notified of the conflict. Accordingly, the offer cannot be treated as an admission of bad faith.
Neither the Response nor the Respondent’s supplemental filing, offer any explanation for the Respondent’s failure to implement that offer. Instead, the Respondent’s supplemental filing emphasises that the Policy deals with abusive domain name registration and not trademark infringement. As the Respondent emphasises, a successful claim under the Policy requires demonstration that the Respondent registered the disputed domain name in bad faith. That may not be required in a trademark infringement action. It is a requirement under the Policy. Whether it would be sensible to incur the risks of a trademark infringement action is a matter for the Respondent and her advisers. The Panel’s role is to decide the dispute in accordance with the requirements of the Policy.
The existence of bad faith may be inferred from facts established in record. For the reasons outlined above, however, the facts from which such an inference may be drawn have not been established on the record in this case.
Accordingly, the Complainant has failed to establish that the Respondent registered the disputed domain name in bad faith. The Complaint must therefore fail. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: August 22, 2018
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