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,
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
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
§
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
§
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.
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
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.
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]
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
[1] See Snow Fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum March 8, 2001) (finding that the domain name <termquote.com> is identical to the Complainant’s TERMQUOTE mark).
[2] See also Janus Int’ l Holding Co. v. Rademacher, D2002-0201(WIPO March 5,2002).
[3] See S.A. Bendheim Co., Inc v. Hollander Glass, FA 142318 (Nat. Arb. Forum. March 13, 2003).
[4] See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enters., Inc., D2000-0047 (WIPO March 24, 2000).
[5] See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO April 27, 2000).
[6] See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept 14, 2000).
[7] See Isleworth Land Co. v. Lost in Space SA, FA 117330 (Nat. Arb Forum Sept 27, 2002).
[8] See Surface Prot. Indus. v. Webposters, D2000-1613 (WIPO Feb 5, 2001).
[9] See Janus Int`l Holding Co. v. Rademacher, D 2002-0201 (WIPO March 5, 2002).
[10] See., e.g., Guerlain
[11] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
[12] On this regard, see Schottenstein
Stores Corp. v. Lifecare Herbal Rpoducts c/o Shahbaz Ahmad Khan. FA 1228275 (Nat. Arb. Forum Dec. 2, 2008) where this
Panelist (FERNANDO TRIANA, Esq.), concluded as follows: “For the sole panelist it is clear that the
Respondent acted in bad faith when (…) requesting compensation in money to the
Complainant, for effectively transferring the domain name in dispute. Likewise
as further evidence of Respondent’s bad faith when registering the domain name
in dispute, the Panel found out within EXHIBIT C of the Complaint that
Respondent requested an initial compensation of USD $1,500.00 for willingly
transferring the domain name <valuecityshopping.com>, and afterwards
increasing his economic claim for USD $15.000.00 for voluntarily giving full
rights upon said name on behalf of Complainant.”
[13] See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003).