DECISION

 

Mountain Mudd LLC v. Roy Snowden dba World Media International Inc dba Emerald Coast Manufacturing Inc

Claim Number: FA0110000100248

 

PARTIES

The Complainant is Brenda Burkhartsmeier Mountain Mudd, L.L.C., Billings, MT (“Complainant”) represented by Brenda Burkhartsmeier, of Mountain Mudd, L.L.C..  The Respondent is Roy Snowden World Media International, Inc. dba Emerald Coast Manufacturing, Inc., Mary Esther, FL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <mountainmud.com>, <mountain-mudd.net>, <mountain-mudd.org>, <mountain-manufacturing.net>, <mountainmanufacturing.org>, < mountainmud.org>, registered with Register.com and Network Solutions, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Hon. Nelson A. Diaz as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 3, 2001; the Forum received a hard copy of the Complaint on October 5, 2001.

 

On October 8, 2001, October 5, 2001, and October 4, 2001, Register.com and Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <mountainmud.com>, <mountain-mudd.net>, <mountain-mudd.org>, <mountain-manufacturing.net>, <mountain-manufacturing.org>, < mountainmud.org> are registered with Register.com and Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Register.com and Network Solutions, Inc. have verified that Respondent is bound by the Register.com and Network Solutions, Inc. 5.0 registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@mountainmud.com, postmaster@mountain-mudd.net, postmaster@mountain-mudd.org, postermaster@mountainmanufacturing.net, postmaster@mountain-manufacturing.org, and postmaster@mountainmud.org by e-mail.

 

A timely response was received and determined to be complete on October 31, 2001.

 

On November 14, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A. Diaz as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that it has trademark interests in the names, “Mountain Mudd” and “Mountain Manufacturing,” and that the disputed domain names are identical and/or confusingly similar to complainant’s marks.  Complainant further asserts that respondent is using the disputed domain names to direct Internet users to Respondent’s Web site, where Respondent markets and sells products that compete with Complainant’s products

 

B. Respondent

Respondent asserts that it registered the disputed domain names in anticipation of entering a partnership agreement with Complainant, which agreement never materialized.  Respondent further asserts that the license agreement that it did eventually enter into with Complainant entitles Respondent to use the disputed names to conduct its business until January 2002.  Respondent states it will then use the disputed domain names to direct Internet users to an online forum focused on Complainant’s business practices, which forum Respondent asserts will be protected by the First Amendment to the United States Constitution.

 

C. Additional Submissions

None.

 

FINDINGS

Complainant produces goods and services under two names, “Mountain Mudd” and “Mountain Manufacturing.”  Mountain Mudd goods and services include flavored coffee syrups, espresso beans and coffee, cups, and chocolate syrup.  Mountain Manufacturing goods and services include the building and sale of coffee kiosks.  Complainant distributes its goods and services through franchise and distributorship agreements.

 

Complainant possesses a U.S. national trademark registration for the name, “Mountain Mudd,” and a common law trademark interest in the name, “Mountain Manufacturing.”  Complainant began using the names in commerce in 1994 and 1995, respectively. 

 

In the summer of 1999, in anticipation of entering a partnership agreement with complainant, respondent filed Florida Articles of Incorporation for “Mountain Mud of Northwest Florida” and registered the disputed domain names.  Respondent informed complainant of each registration and Complainant made no objections.  Respondent’s anticipation of the partnership agreement never moved beyond discussions between the parties.  The parties did, however, enter into a one-year license agreement on May 22, 2000.

 

The license agreement granted Respondent a license to sell Complainant’s coffee-related products under the Mountain Mudd name affixed to portable espresso units and kiosks in the southeastern United States.  Complainant could renew the agreement annually at Complainant’s discretion.  If Respondent discontinued its use of the mark to sell products, then the agreement required Respondent to remove the mark from the espresso units and kiosks within 120 days of written notice from Complainant.

 

The agreement did not grant Respondent any license whatsoever to trade on the name, “Mountain Manufacturing.”  There is no evidence that Respondent was ever known by the names, Mountain Mud or Mountain Manufacturing beyond the scope of its license agreement with Complainant.  Respondent permitted Complainant to use the domain name, <mountainmud.com>, in the course of the licensing agreement.

 

On February 2, 2001, Complainant notified Respondent via email that Complainant would not renew the license agreement upon its termination on May 22, 2001.  Complainant allowed Respondent to continue to use the Mountain Mudd mark, but advised Respondent that Complainant could revoke the license to use the mark at any time after the termination of the agreement term.  By letter dated September 14, 2001 Complainant required Respondent to cease using the Mountain Mudd mark by no later than 120 days, January 12, 2002.

 

Now, Respondent is using the disputed domain names to direct Internet users to the Web site of Emerald Coast Manufacturing, Inc.  At this Web site, Respondent markets and sells Emerald Coast Manufacturing coffee products and kiosks, the latter of which are virtually identical to the kiosks sold by Complainant. 

 

Each party is poised to initiate lawsuits based on tort, contract, and Lanham Act claims.  Respondent has offered to settle the entire matter for $1.5 million.  Respondent’s settlement offer does not expressly offer to sell the disputed domain names to Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

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

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

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

 

Identical and/or Confusingly Similar

Complainant owns a nationally registered mark for Mountain Mudd and a common law mark in Mountain Manufacturing.  Respondent’s domain names, <mountainmud.com>, <mountain-mudd.org>, <mountain-mud.net>, and <mountain-mudd.org>, are confusingly similar to the name, Mountain Mudd.   The domain names, <mountain-manufacturing.org> and <mountain-manufacturing.net> are confusingly similar to the name, Mountain Manufacturing.  See Victoria’s Secret, et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000).

 

Rights or Legitimate Interests

Respondent has failed to demonstrate that it has rights or legitimate interests in the disputed domain names.  Although Respondent filed incorporation papers for Mountain Mud of Northwest Florida, there is no evidence that Respondent ever traded under that name.  Respondent claims that he registered the disputed domain names in anticipation of a partnership agreement with Complainant, but Respondent’s anticipation never developed beyond discussions between the parties.  A dormant corporate name and informal discussions regarding a possible partnership agreement - without more - do not amount to "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” as required by UDRP 4(c)(i).  In Etax Corp. v. Dr. Van R. Whiting, AF-0369 (eRes. Oct. 15, 2000), by contrast, the Respondent adduced a comparative abundance of evidence regarding a detailed business plan into which it intended to incorporate the disputed domain name.

 

Complainant’s failure to object to Respondent’s registration of the disputed domain names does not mean Complainant relinquished its rights in the names and its marks to Respondent, particularly in light of Complainant’s unwillingness to cede anything more than a trademark license to Respondent.  Moreover, as Complainant’s prospective licensee, Respondent knew or should have known at the time it registered the names that the disputed names were identical or nearly identical to an integral part of Complainant’s corporate names and marks.  “[I]n short, the Respondent understood the legitimate interests and rights of [complainant], and, by contrast, his own lack of interest or right.”  Vinidex Pty. Ltd. V. Auinger, AF-0402 (eRes. Oct. 18, 2000).  In Vinidex, supra, the Panel found that a similar circumstance warranted the finding that Respondent had no rights or interests in the disputed domain name.  The Panel makes the same finding here.   

 

Additionally, there is no evidence that Respondent is known by any of the domain names, as required by UDRP 4(c)(ii).  As noted above, Respondent trades under the name of Emerald Coast Manufacturing, Inc.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001).  Finally, there is no evidence that Respondent is making a noncommercial use of the domain names without intent for commercial gain to misleadingly divert consumers, as required by UDRP 4(c)(iii).  To the contrary, as noted above, Respondent is using the disputed domain names to direct Internet users to the Web site of Emerald Coast Manufacturing, Inc., where Respondent sells coffee products and kiosks.  See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000).

 

Registration and Use in Bad Faith

UDRP (4)(b)(iv), requires a finding of bad faith where:

[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

As noted above, the URLs for the disputed domain names currently direct the Internet user to a Web site of Emerald Coast Manufacturing, Inc.  This Web site markets and sells coffee products and kiosks, the latter of which are virtually identical to the kiosks sold by complainant.  It is plain that Respondent is using Complainant’s name (and close variations thereof) to draw the Internet user to Respondent’s Web site and, therefore, is demonstrating bad faith.  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000).           

Respondent justifies its use of the disputed domain names by citing the Complainant’s September 14, 2001 letter, which required Respondent to cease using the Mountain Mudd mark by no later than January 12, 2002.  Complainant obviously sent that letter in accordance with the provisions of the license agreement.  Neither the agreement nor the letter, however, can be reasonably construed to contemplate allowing Respondent to use Complainant’s marks (or close variations thereof) in the form of domain names to sell competing products.

 

DECISION

The domain names, <mountainmud.com>, <mountain-mudd.net>, <mountain-mudd.org>, <mountain-manufacturing.net>, <mountain-manufacturing.org>, <mountainmud.org>, are transferred to complainant.

 

 

Hon. Nelson A. Diaz, Panelist

 

Dated: November 27, 2001