National Arbitration Forum

 

DECISION

 

Mucca Design Corp. v. Mucca, Inc c/o Rafael Rosa

Claim Number: FA0904001259737

 

PARTIES

 

Complainant is Mucca Design Corp. (“Complainant”), represented by Iliya M. Fridman, of Fridman Law Group, PLLC, New York, USA.  Respondent is Mucca, Inc c/o Rafael Rosa (“Respondent”), represented by Rafael Rosa, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <mucca.com>, registered with Enom, 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.

 

FERNANDO TRIANA, Esq., as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 28, 2009.

 

On April 28, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mucca.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement 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 May 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 26, 2009 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@mucca.com by e-mail.

 

A timely Response was received and determined to be complete on May 26, 2009.

 

On June 3, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed FERNANDO TRIANA, Esq. as Panelist.

 

In spite of the prior, on June 2, 2009, the National Arbitration Forum attached to the hardcopy material which was afterwards forwarded to the Panel, an additional submission from the Respondent along with an attachment sent by the Complainant on that regard.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

This Complaint is based upon Complainant long-time use and ownership of the MUCCA trademark in the United States of America. Complainant also relies herein on its extensive promotion and advertisement of MUCCA services, which has also acquired common law trademark rights in the domain names in dispute, sufficient enough to invoke protection.

 

In that sense, Complainant’s basic contentions are as follows:

 

1.      The domain name <mucca.com> is identical to Complainant’s registered trademark MUCCA, supported and provided under exhibit A of the Complaint. The Respondent infringes upon and violates the Complainant’s rights under ICANN Policy 4(a)(i).

 

2.      The Respondent has no rights or legitimate interest in the domain name <mucca.com>, pursuant to ICANN rule 3 (b) (ix) (2);ICANN Policy 4(a)(ii) for the following alleged reasons: (i) the date of first use disclosed in Complainant’s trademark registration is at least as early as 1999, which predates the February 16, 2002 registration of the domain name by Respondent (Exhibits A, B and C); and (ii) Respondent has admitted to having no legitimate use for <mucca.com> (exhibit D).

 

3.                    Likewise, the Respondent has neither known rights nor a legitimate interest in the Domain Name in dispute. The domain name <mucca.com> should be considered as having been registered and used in bad faith by the Respondent pursuant to ICANN Rule 3(b)(ix)(3); ICANN Policy  4(a)(iii) for the following reasons: (i) Complainant has placed Respondent on notice that his use of mucca.com is in violation of the legal rights of Complainant and Respondent has refused to cease the wrongful use and has instead demanded an inordinate sum in exchange for turning over the domain name (Exhibit D); (ii) The meta tags that Respondent is using for <mucca.com> include “Mucca Design” which is the full name of Complainant’s corporation, indicating Respondent’s intent to misleadingly divert consumers for his own commercial gain and creating a substantial likelihood of confusion with the Complainant’s mark (Exhibit E); (iii) On <mucca.com>, Respondent states that he is operating a business that offers branding, marketing and design services when in fact he has admitted that no such business currently exists, indicating that he is using the domain name primarily for the purpose of disrupting the business of Complainant (Exhibits D and E); (iv) Respondent has admitted that <mucca.com> receives over 13 million hits per month, showing that his intentional abuse of the domain name has actually disrupted the business of Complainant and caused confusion in the marketplace; (v) Respondent’s repeated attempts to sell the domain name to Complainant indicate that he is using it in bad faith and provide further evidence that Respondent is cybersquatting (Exhibits D and F).

 

The Complainant requests that the Panel issues a decision that the domain-names be transferred.

 

 

B. Respondent

 

Respondent requests that the Complaint be immediately dismissed by the Panel due to the following reasons:

 

§                      <mucca.com> remains the property of Mucca, Inc. open in Florida with revenues that generated over six figures from the years 2002-2005.

 

§                      Regardless the fact that the registrar is outdated, the original company used by Respondent to register has been sold many times over and now resides in Taiwan with a partner in the United States of America.

 

§                      Respondent has offered to sell <mucca.com> to Complainant for the price of USD $50,000.00, which allegedly amounts to the loss incurred Respondent’s business.

 

§                      That due to the foregoing, this can not constitute a case of cyber squatting.

 

FINDINGS

 

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Likewise, paragraph 10(d) of “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

In the present case, the Panelist wants to place emphasis in the importance of the evidence filed by Complainant to prove its assertions, which has been studied to determine its relevance and weight in arriving at a decision.

 

Additionally the Panelist considers noteworthy the fact that the Respondent filed a proper response to the complaint, but yet, failed to provide evidence of his assertions, allegations and defense.

 

Moreover, as per the additional submission done by Respondent lacks of fulfillment of requirements provided under Forum’s Supplemental Rule No. 7, the Panel, pursuant to said  rule,  the Panelist decides not to consider the aforementioned Submission

 

Furthermore, 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 names registered by the Respondent are identical 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;

 

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

 

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

 

The first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world, regardless of the common law rights acquired for the regular use of the expression in connection to a determinate product or service.

 

Complainant contends that the Domain Name is identical with and confusingly similar to the trademark MUCCA pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of a generic or merely descriptive term.[1] 

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

In fact, Complainant has provided evidence of a registration for the MUCCA mark in the United States of America since May 27, 2007 to cover services of International Classes 35 and 42. The pertaining trademark certificate for the trademark MUCCA No. 3,246,930, likewise provides that the date of first use of the MUCCA mark is in 1999. The prior facts give the Complainant a legitimate right to file the complaint.

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[2]. Complainant registration appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services. Furthermore, the evident fact that the mark MUCCA has been used in commerce since 1999, implies that upon said trademark, Complainant has acquired common law rights since at least as early as 1999.[3]

 

Respondent has the burden of contesting these assumptions[4] and in this case, it has failed to contest Complainant's assertions regarding its trademark rights. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights of the cited trademark, as per the legitimate certified and common law rights, constituted over the MUCCA expression.

 

Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s registered trademark, the sole panelist wants to point out that the entirety of the mark MUCCA is included in the Respondent Domain Name <mucca.com>. Therefore, the Domain Name is identical and confusingly similar to the MUCCA mark pursuant to the Policy paragraph 4(a)(i) due to the fact that it is used to cover the very same services. Actually the addition of .com is not a distinguishing difference.[5] The addition of a gTLD does not distinguish a domain name from a Complainant’s mark sufficiently to reduce or eliminate the likelihood of confusion. Therefore, adding to the end of the mark the generic top-level domain gTLD “.com,” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy. [6] - [7] In that very same sense, the likelihood of confusion evidenced in this case is determinant so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement. [8]

 

Therefore sole Panelist concludes that this evidence establishes Complainant’s rights in the MUCCA trademark for purposes of Policy ¶ 4(a)(i). This because ICANN panels have recognized that reproducing a trademark in its whole is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark; indeed, the addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's registered trademark.

 

Rights or Legitimate Interests

 

Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’ s rights or legitimate interest to the domain name:

 

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue

 

Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii).

 

The Complainant trademark registration before the Patent and Trademark Office of the United States, appears to be a prima facie incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the same in connection with the stated services, which are basically business consulting, branding of products and services for others and strategy services.[9] It’s the Respondent who has the burden of refuting this assumption.

 

After an investigation, made ex officio on June 11, 2009, the sole panelist has found that the Complainant is using his trademark in the domain name that he owns, <muccadesign.com>. When the panelist entered said web page, the following information appears therein:

 

 

 

 

 

 

 

On the other hand, reading the terms exposed within EXHIBIT C of the Complaint, another issue to consider in this particular case, is that Respondent has not made use of its domain name for a considerable term of time, which demonstrates that it does not have a legitimate interest in the domain name, under Paragraph 4)c)(i). The prior, as per when exploring for the services offered by Respondent through the domain name in dispute, the Panel could adduce evidence that the web site lacks of any content at all, as shown ahead:

 

 

 

The Respondent’s principal argument with respect to the issue of rights or legitimate interest appears to be that in spite of the fact that the registrar is outdated, it is now willing or able to properly update it.

 

Considering all the foregoing facts, the  Panel deems that the dispute domain has been periodically  inactive, even  after granted registration. Previous Administrative Panels[10] have concluded that the inactive web pages constitute a bad faith registration, as stated in the following administrative decision:

 

“However, this does not necessarily imply that the respondent is undertaking a positive action in bad faith in relation to the domain name. The concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept, as supported by the actual provision of paragraph 4(b) of the Policy. As a matter of fact, only one of the circumstances identified in paragraph 4(b) as "evidence of the registration and use of a domain name in bad faith" by necessity involves a positive action post registration undertaken in relation to the domain name (paragraph 4(b)(iv)) while the other three circumstances contemplate either a positive action or inaction in relation to the domain name (paragraphs 4(b)(i), (ii), (iii)).”

 

Bearing in mind, that the Respondent has not used the domain, it is irrefutable for the Panel to conclude that that the Respondent is under the circumstances described under the Policy 4(b)(i)(iv).

 

In addition to the afore-referenced, Respondent is not commonly known by the disputed domain name nor has it ever been the owner of the MUCCA mark. Furthermore, leading the evidence provided by the Complainant, it is clear that the Respondent is not affiliated with, licensed by, has not been given any permission to use the MUCCA mark by Complainant and is not otherwise in any way connected with Complainant or its affiliates.( ICANN Rule 3(b)(ix)(2))  On that regard, the Panel finds that Respondent has admitted in an e-mail to Complainant that any business that Respondent operated under the MUCCA mark has been bankrupt “for years,” which conclusively constitutes evidence that Respondent is not commonly known by the MUCCA mark.  The Panel therefore finds that although Respondent’s WHOIS information lists its name as “Mucca, Inc c/o Rafael Rosa” there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <mucca.com> pursuant to Policy  4(c)(ii).”). In view of the foregoing, the Panel concludes that Respondent is not commonly known by the disputed domain name.

 

 In light of all the foregoing, the sole Panelist considers that due to the fact that none of the contentions made by the Complainant were refuted with proper or adequate evidence by the Respondent, and after reviewing the evidence attached to the present case and the ex officio proofs, it has been proven that there is no right or legitimate interest in the disputed domain name by Respondent, therefore it does not meet Paragraph 4 (a) (ii) of the Policy.

 

Further to the prior and foremost in this initial finding, the Panel has found that Complainant made a prima facie case in support of its allegations and thus, the burden shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain name. Considering that the Respondent failed to prove a legitimate interest pursuant to Policy, Bad Faith appears as a direct consequence of its lack of argumentation on this regard. In that sense, considering that Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion. Otherwise, the registration of the domain name not would only be considered as illegitimate but in bad faith as well.  [11]

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has acted in bad faith. The sole panelist has considered the fact that Respondent has failed to evidence its legitimate rights or interest in the disputed domain name. Notwithstanding the above, the sole panelist will evaluate Complainant assertions and evidence regarding Respondent bad faith in the registration of <mucca.com> domain name.

According to paragraph 4(b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by 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.

 

The sole panelist considers that the Complainant’s has a history on the pertaining particular area of business it addresses and focuses its interest, taking into consideration the usage that it has given of its MUCCA trademark.

 

Moreover, the fact that the Complainant has registered its trademark is sufficient evidence for the sole panelist that the Complainant is identifiable in the market by its distinctive sign.

 

Indeed, the domain name is clearly connected to the Complainant’s trademark for business operations and services as the sole panelist could confirm regarding and checking the <muccadesign.com> domain name usage.

 

For the sole panelist it is clear that the Respondent acted in bad faith when contacted the Complainant via e-mail making an offer to sell the disputed domain name to Complainant for USD $50,000[12].  This Panel believes that Respondent’s offer to sell is evidence that Respondent has abandoned any rights or legitimate interests in the disputed domain name and thus, Respondent has foregone any claims to rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)[13].

 

Finally, this Panel considers as conclusive evidence, the fact that under EXHIBIT F of the Complaint, Respondent has admitted that the domain name in dispute has had over 13 million hits per month and thus, he rejected the sum of USD $50.00 offered by Complainant in exchange for relinquishment of the domain. In view of the above, the Panel deems that in several occasions, the Respondent has admitted not to have legitimate use for the domain name, yet, he continues to hold it ineffective but still on his behalf, to promote design services in order to intentionally redirect traffic from Mucca Design´s website.

 

Bearing in mind the above, the Panel finds that such use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the Respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the Respondent used the domain name to take advantage of the Complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the Respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

Due to all the foregoing and overwhelming facts, Respondent failed to evidence use of the disputed domain for good faith purpose.

The circumstances provided in paragraph 4(b) of the Policy are not limiting factors of how bad faith can be established, but allow merely basic parameters for the sole panelist when determining bad faith of Respondent.

Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <mucca.com> domain name.

DECISION

 

The Panel has found that the Complainant has a trademark registration identical or confusingly similar to the domain name in dispute. That the Respondent lacks of legitimate interest and that the domain name was used in bad faith. Consequently, under ther ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ordered that the <mucca.com>, domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

 

FERNANDO TRIANA, Esq.,

 Panelist
Dated:  June 17, 2009