20th Nov 2014
NATIONAL ARBITRATION FORUM
Jobetty LLC, dba Mudpuppy’s Tub & Scrub v. Katarzyna Bieniek / KB
Claim Number: FA1409001582038
Complainant is Jobetty LLC, dba Mudpuppy’s Tub & Scrub (“Complainant”), represented by Christopher Wimmer of Emergent Legal, California, USA. Respondent is Katarzyna Bieniek / KB (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mudpuppies.com>, registered with KEY-SYSTEMS GMBH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist (Chair)
Sandra J. Franklin as Panelist
Diane Thilly Cabell as Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2014; the National Arbitration Forum received payment on September 26, 2014.On September 29, 2014, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <mudpuppies.com> domain name is registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. KEY-SYSTEMS GMBH has verified that Respondent is bound by the KEY-SYSTEMS GMBH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).On October 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on October 6, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.A timely Response was received and determined to be complete on October 27, 2014.On November 06, 2014, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus, Sandra J. Franklin and Diane Thilly Cabell as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Policy 4(a)(i). Respondent’s <mudpuppies.com> domain name is confusingly similar to the MUDPUPPY’S trademark, as the name incorporates a common alternate spelling of Complainant’s trademark.
Policy 4(a)(ii). Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent is not in the business of dog grooming, washing, or other related services, and Respondent is not commonly known as “mudpuppies,” or by the <mudpuppies.com> name.
Policy 4(a)(iii). Respondent registered and used the <mudpuppies.com> domain name in bad faith. The disputed domain name is used to promote hyperlinks to third-party businesses that provide pet grooming, and related pet-services in competition with Complainant.B. Respondent
Policy 4(a)(i). The <mudpuppies.com> domain name is not confusingly similar to the MUDPUPPY’S trademark, as the Complainant’s trademark is the possessive form, while the domain name takes the plural form.
Policy 4(a)(ii). The <mudpuppies.com> domain name is comprised of two generic terms “mud” and “puppies.”
Respondent’s rights and legitimate interests are based on the descriptive meaning of the disputed domain name and not to target a trademark. Third-party use of the “mud puppy” term is extensive, and Complainant does not enjoy exclusive rights in the term. Respondent has registered thousands of generic dictionary common word domain names that relate to pet and pet products. The registration and use of common words and dictionary words, used in their commonly understood sense, is recognized as a legitimate use under the Policy. Respondent does not use the disputed domain name to provide links to Complainant. The promoted links are auto-generated by Google, and are based on user search behavior. Furthermore, Respondent does not use the disputed domain name to describe the content of the site, which demonstrates a bona fide use.
Policy 4(a)(iii). The disputed domain name was registered October 22, 2001, which predates Complainant’s trademark registration. Respondent did not register the disputed domain name in bad faith.
Complainant should be barred by the Doctrine of Laches as Complainant has waited over thirteen years to initiate this proceeding.
Respondent did not use the disputed domain name in bad faith, as the website has not shown any links related to Complainant’s trademark or business.
Respondent requests a finding of reverse domain hijacking. Respondent urges that Complainant has abused the UDRP process, and that Complainant knew Respondent never targeted Complainant as the domain name is comprised of generic terms and was registered before Complainant registered the trademark with the USPTO.
Complainant Jobetty LLC, dba Mudpuppy’s Tub & Scrub (“Mudpuppy’s”) is in the business of providing dog grooming and dog wash services.Complainant has a registered trademark for MUDPUPPY’S with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3977432, registered June 14, 2011, filed October 28, 2010).Respondent’s late husband, Jon Wichmann, registered the <mudpuppies.com> domain name on October 22, 2001. On January 28, 2008, Jon Wichmann changed the registrant information of the disputed domain name to the Respondent’s name, Katarzyna Bieniek.The disputed domain name contains hyperlinks referring to dog and pet related services.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service trademark in which Complainant has rights; and
(2) 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 SimilarA majority of the Panel is of the view that paragraph 4(a)(i) means that a Complainant must have trademark rights preceding the date when the domain name in issue was registered.The Complainant should establish trademark rights before the disputed domain name’s registration in order to prove that the Respondent was aware of the Complainant’s services and wanted to take benefit of the trademark’s notoriety.
If the Complainant does not meet the requirements of this paragraph, he cannot succeed.This requirement has been recognized in numerous UDRP cases – See Ode v. Intership Ltd., D2001-0074, WIPO May 1, 2001 or Business Architecture Group, Inc. v. Reflex Publishing, Claim Number: FA0104000097051, NAF June 5, 2001: “Ordinarily, to satisfy the requirements of Rule 4(a)(i), the complaining party must have trademark rights before the domain name in dispute was registered”.
The Complainant has a registered trademark “MUDPUPPY’S” with the USPTO, covering dog grooming services. In order to satisfy the paragraph 4(a)(i) requirements, the Complainant has to prove trademark rights that predate the <mudpuppies.com> domain name registration.The domain name registration dates back to October 22, 2001. The Complainant’s trademark registration was filed on October 28, 2010 and registered June 14, 2011. There is no evidence before the Panel that the Respondent was aware of the Complainant’s activities at the time when the disputed domain name was registered, at least 9 years prior. Therefore, the Panel cannot establish that the Respondent targeted the MUDPUPPY’S trademark in order to obtain benefits by redirecting the Complainant’s consumers to their competitors. See Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, D2008-0641, WIPO, July 31, 2008.
As the Complainant has not brought any proof or argument in support of common law trademark rights dating back to 2001, the Complainant failed to establish the requirements of the first element under the ICANN Policy.In order to prevail in this proceeding, the Complainant must prove all three elements under Paragraph 4(a). As the Panel concludes that the Complainant failed to prove the first element, listed in Paragraph 4(a)(i), this means that the Panel does not have to consider whether Complainant has proven the remaining elements contained in Paragraphs 4(a)(ii) and 4(a)(iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765, NAF Sept. 20, 2002 or Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 NAF Dec. 28, 2006, deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy 4(a)(i).
Reverse Domain Name Hijacking
Respondent submits that the Complainant has abused the UDRP proceeding by filing the claim and that “Reverse Domain Name Hijacking” should be awarded. In the Panel’s view such assertions are speculative comments and do not justify any finding or decision by the Panel.
Having not established the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mudpuppies.com> domain name REMAINS WITH Respondent.Nathalie Dreyfus, Panelist (Chair)
Sandra J. Franklin, Panelist
Diane Thilly Cabell, Panelist
Dated: November 20, 2014