Complainant is Munchkin, Inc. of North Hills, California, United States of America, represented by the law firm Panitch Schwarze Belisario & Nadel, LLP, United States of America.
Respondent is Whois Privacy Protection Service, Inc. and Mamas and Munchkins, LLC of Bellevue, Washington, United States of America, and Lake Forest, Illinois, United States of America, respectively represented internally.
The disputed domain name <mamasandmunchkins.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2010. On January 6, 2010, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On January 6, 2010, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2010, and the Response was filed with the Center on that date.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 8, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 9, 2010, Complainant contacted the Center, requesting that the proceedings be suspended while the parties explored settlement. The Center referred the matter to the Panel, who issued Procedural Order No. 1 on February 15, 2010, suspending the proceedings through March 16, 2010. Neither party advised the Center of a settlement by that date, so in accordance with the Procedural Order this Panel shall proceed to a decision.
Immediately after expiry of the suspension period the Center received a request from Complainant to extend the suspension period to pursue settlement. No specific time period was requested, and Complainant gave no indication whether Respondent consented to Complainant's request. The Panel directed the Center to advise the parties that he had directed the Center to notify the decision on March 25, 2010, unless each party separately advised the Center that the matter had been resolved.
As has been frequently noted in UDRP decisions, an administrative proceeding under the Policy is not civil litigation. The Policy and the Rules are intended for prompt resolution of a limited class of disputes. Both emphasize dispatch in proceeding to a decision, and indefinite suspensions are rarely if ever permitted. Even requests for discrete extensions that might be routine in a lawsuit are disfavored. All too often such requests for extensions of time limits prescribed by the Rules are little more than thinly disguised stalling. See, e.g., Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and unionsquarepartnership.org Private Registrant, WIPO Case No. D2008-1234; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The Panel expresses no opinion on whether that is the case here, but notes that he deems a further extension to be inconsistent with the expedition called for by the Policy and the Rules.
Complainant makes and sells products for babies, children, and their parents. Many of these products are patented. Complainant hold several trademarks registered with the United States Patent and Trademark Office for MUNCHKIN. Of those referenced in the Complaint the first was registered in 1997 based upon a claimed first use in commerce in 1994. Complainant's principal website is <munchkin.com>.
Respondent registered the disputed domain name in November 2005 and uses it to sell baby and women's products under the categories Maternity, Mamas Bags, Munchkin Wear, Munchkin Gear, BPA free Bottles and Sippy Cups, Safety, and Sale. All products appear to be made by well-known third party manufacturers such as Elle, babysparewear, and Trumpette. None of the products offered on Respondent's site was made by Complainant. Products are pictured and described, with each manufacturer's name identified. Each page is identified prominently with the name MAMAS & MUNCHKINS in the upper left hand corner. This website is well developed and professionally presented, and includes perhaps a dozen pages of products. The Wayback Machine at <archive.org> indicates similar use since January 2006, shortly after Respondent's registration of the disputed domain name.
Complainant sent Respondent cease-and-desist letters in July and October 2009 but received no reply.
The Panel summarizes Complainant's contentions as follows:
1. Complainant holds rights in its MUNCHKIN marks by reason of their registration with the USPTO. The disputed domain name “fully incorporates” that mark. Respondent's registration of the disputed domain name conflicts with its representations made in the registration agreement, in particular its undertaking under paragraph 2 of the Policy.1 Because Respondent sells similar products as Complainant, confusion is likely.
2. Complainant has never licensed Respondent to use its marks, Respondent holds no trademark rights to MUNCHKIN, and Respondent is not a reseller of Complainant's goods. Respondent's use of a domain name incorporating Complainant's mark for sale of competing goods is not bona fide or legitimate under paragraph 4(a)(ii) of the Policy.
3. Respondent had “constructive notice” of Complainant's MUNCHKIN marks when it registered the disputed domain name. Registration of a domain name that incorporates the mark of a competitor and using it to compete with the mark owner constitutes registration and use in bad faith. “Respondent's incorporation of Complainant's mark in its domain name, coupled with the fact that Complainant has prior valid and subsisting rights in the MUNCHKIN trademark is a sufficient basis for establishing bad faith.”
Respondent's contentions are short and to the point, so the Panel will quote them in full rather than summarize:
“. . .the name MUNCHKINS itself is a plural and means children (as in the Munchkins from the Wizard of Oz movie fame). I am a working mother of 5 small children running a very small online business out of my home. I certainly do not feel like a threat to this multi million dollar organization. I am familiar with the Munchkin line but I do not believe that the legal name of my business (Mamas and Munchkins,LLC) nor my website (www.mamasandmunchkins.com) breaks the law or infringes on their business. At no time has anyone EVER mistaken me for them by contacti! ng [sic] me to ask if I carry their products. I was not aware that a nickname for children (AKA Munchkins) could be a trademark violation. When the company was legally filed my lawyer checked for trademark violations at that time and saw no conflict with the word Munchkins. I will respect your decision at the WIPO and I look forward to hearing from you. I have no problem changing landing page or metatag words that are inadvertently listed as munchkin versus munchkins but I would prefer to keep the corporation name and website name that I've worked hard for years to build customer loyalty to so that I can continue to support my large family.”
The Policy's requirements are conjunctive; Complainant's failure to carry its burden of proof under any of the provisions of paragraph 4(a) results in a denial of the Complaint. As on the Complaint and its supporting exhibits there is no proof of registration or use in bad faith, the Complaint must be denied.
In order to establish registration in bad faith, in this Panel's view, Complainant must demonstrate by competent evidence that Respondent actually knew of Complainant's mark and selected the disputed domain name to take advantage of the renown that mark has achieved. Complainant takes little (if any) account of these requirements; its sole pleaded basis for its charges of Respondent's lack of legitimate interest and bad faith are its “prior valid and subsisting” trademark rights in MUNCHKIN are incorporated in the disputed domain name and its statement that Respondent has used the disputed domain name to “direct consumers to its website” and “misleadingly divert consumers away from the complainant's business”. As stated by many panels on previous occasions, with very limited exceptions the American trademark law doctrine of constructive notice does not apply in Policy proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4; Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172. Nothing in the record in this case supports departing from that Consensus View. Complainant's mark is not well-known in the trademark sense, and (as Respondent points out) it is a term derived from a popular movie from the 1940s that is often used as an affectionate moniker for children.2 Though Respondent acknowledges knowing of the mark, the record indicates no attempt, direct or subtle, at targeting.3 Complainant alleges none, only the sale of third party competing products. There is no showing (and no allegation) of copying the look and feel or any feature of Complainant's website, and no showing of any confusion or any similarity. As in Sophia's Heritage Collection, Inc. v. Beverly Danusis, WIPO Case No. D2009-1752, “at no time did Respondent appear to seek to exploit the goodwill attaching to Complainant's mark….. This is not an instance where seeking a free ride on Complainant's mark is the only reasonable explanation for selecting the disputed domain name.” It is just as likely that Respondent included MUNCHKIN in its corporate name and web address because of the movie from which the term originated as from imitation of Complainant.
While not necessary to the Panel's decision, it is worth noting that Respondent's five-year use of the disputed domain name for an active business (as opposed to a placeholder page or collection of hyperlinks) and Respondent's business name – “Mamas & Munchkins” - very likely bring Respondent within the safe harbors of paragraphs 4(c)(i) and (ii) of the Policy, defeating any prima facie showing by Complainant under paragraph 4(a)(ii).4 The facts set forth in the preceding sentence are publicly available and thus were accessible to Complainant prior to submitting its Complaint to the Center.
Given the fact that the Complaint on its face reveals serious inadequacies that demonstrate no likelihood of success on the merits, Complainant's filing of the Complaint approaches Reverse Domain Name Hijacking. See 1 Model Management, LLC. v. L.A.S. Inc., Latifa Aadess, 1 Models LLC, WIPO Case No. D2008-1173; accord, Mirabella Beauty Products, LLC v. Mrs. Jello, LLC, WIPO Case No. D2009-0673. Especially is that so when Complainant is represented by counsel. Urban Logic, Inc. v. Urban Logic, Peter Holland, WIPO Case No. D2009-0862. The Panel in his discretion, however, elects not to make such a finding, in the hope that Complainant will now leave Respondent alone.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: March 25, 2010
1 “2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
2 Munchkin is more than slang; it has become a standard English word. See, e.g., American Heritage Dictionary of the English Language, 4th Ed.: munchkin is defined as “1. A very small person. 2. [Informal] A child.”
3 Complaint asserts that Respondent's use of MUNCHKIN in its metatags evidences targeting. How use in these particular circumstances of a word in Respondent's corporate and online name in a metatag becomes per se bad faith is unexplained.
4 Complainant's reference to paragraph 2 of the Policy merits only a footnote. None of the recent cases that have discussed this Policy provision has placed upon a domain name holder a continuing obligation to monitor trademark registries for the mere existence of marks that might be included in a domain name. As noted in the text, Complainant here seeks transfer based only upon existence of its mark and the fact that Respondent sells some of its competitors' products. Bad faith under the Policy requires more than that.