Su Hardy v. Lou Crawford

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Su Hardy v. Lou Crawford

Case No. D2002-1123

1. The Parties

The Complainant is Su Hardy, Director, , 125 Maresfield Roadof, Brighton BN2 5ES, United Kingdom of Great Britain and Northern Ireland, of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Lou Crawford, The Keeper Inc , PO Box 20023of , Cincinatti, OH 45220Ohio, United United States States of of Americaa, of United States of America.

2. The Domain Names and Registrar

The disputed domain names <mooncup.com> and <themooncup.com> are registered with InnerWise, Inc. d/b/a ItsYourDomain.com and Networkand Network Solutions, Inc. Registrar respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

the "Center") on December 8, 2002. On December 9, 2002, the Center

transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com and Network

Solutions, Inc. Registrar a request for registrar verification in connection

with the domain names at issue. On December 11, 2002, InnerWise, Inc. d/b/a

ItsYourDomain.com and on December 12, 2002, Network Solutions, Inc. Registrar

transmitted by email to the Center their verification responses confirming that

the Respondent is listed as the registrant and providing the contact details

for the administrative, billing, and technical contact. . The Center verified

that the Complaint satisfied the formal requirements of the Uniform Domain Name

Dispute Resolution Policy (the ""Policy""), the Rules for

Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on December

18, 2002. In accordance with the Rules, paragraph 5(a), the due date for

Response was January 7, 2003. The Response was filed with the Center on January

15, 2003.

The Center appointed Knud Wallberg as the sole Panelist in this matter on January

20, 2003. The Panel finds that it was properly constituted. The Panel has submitted

the Statement of Acceptance and Declaration of Impartiality and Independence,

as required by the Center to ensure compliance with the Rules, paragraph 7.

On January 31, 2003, the Panel received copy of an e-mail sent to the Center

by the Complainant on January 25, 2003, and that apparently was meant as a supplementary

filing. The Panel has carefully looked at the filing and has decided not to

allow it. For the following reasons: The Policy and the Rules are based on that

each party to the proceedings can file one submission namely a Complaint and

a Response, Rules Para. . 4 4 & 5. Only in special circumstances,

such as if the Response raises questions that could be decisive for the case

and that Complainant did not address in the Complaint, or if certain facts have

changed since the filing, additional filings should be accepted. . See inter

alia WIPO Case D2002-0058, AutoNation Holding

Corp. v. Rabea Alawneh and WIPO Case D2001-1181,

Chantelle v. Marvin Anhalt. In this case the intended supplemental filing

seems only to contain facts and arguments that Complainant could have provided

in the Complaint. It is not a response to claims made in the Response and in

addition, the content of the filing does not provide information that is relevant

or decisive for the Panel to take a decision under the UDRP.

4. Factual Background

Complainant´’s private limited company called Mooncup LtdLtd. was incorporated

under UK law on April 18, 2002.

Complainant filed an application for the Trade Mmark and device of ""Mooncup""

for a menstrual cup at the UK Patent Office on November 12, 2002, in class 05.

The application has not yet matured into registration.

Complainant registered the domain name <www.mooncup.co.uk> on August

3, 2000.

Respondent is located in the USA and has been selling menstrual cups since 1987, and is the proprietor of the registered trademark THE KEEPER.

Respondent has filed a federal trademark application at the USPTO for the mark

MOON CUP on February 25, 2002. The application has not yet matured into

a registration.

5. Parties’ Contentions

A. Complainant

Complainant claims that Mooncup has been her common law mark since August 2000,

when the domain name www.<mooncup.co.uk> was registered and a website

to promote and sell menstrual cups was subsequently uploaded. Since this point

in time Complainant has manufactured a hypo-allergenic menstrual cup which has

the name "The Mooncup" embossed on the product itself.

The domain names <mooncup.com> and <themooncup.com> are identical or confusingly similar to this mark.

The Respondent has manufactured and sold a menstrual cup called the Keeper

for 15 15 years, but has never sold a menstrual cup, or any other product,

called the Mooncup. The website found at "www.mooncup.com" contains

no use of the name Mooncup, or any references to this name. The website to be

found at "www.themooncup.com" contains reference to The Moon Cup stating

that it is also referred to as the Keeper, and directing internet users to the

Respondent'’s site "www.thekeeperinc.com." No product specifically

called "The Mooncup" is advertised on this website.

Complainant claims that the website located at "www.themooncup.com" has been created in order to validate the Respondent’s use of the name ""The Mooncup"" but that this is not genuine use as the site merely offers a distributorship opportunity for the Respondent’s own product, the Keeper. For the reasons given above Complainant claims that the Respondent has no rights or legitimate interests in respect of the contested domain names.

Complainant further claims that the Respondent has registered and is using the contested domain names solely because Complainant uses the name ""Mooncup"" to describe a menstrual cup. . In so doing the Respondent prevents Complainant from using these domain names to promote her product, namely the Mooncup.

In addition, the Respondent is disrupting the business of a competitor, as without the ".com" domain name it will be very difficult for me to expand into the global internetInternet market where the ".com" suffix is usual.

Complainant also claims that the Respondent’s use of domain names containing

the name "Mooncup" causes a likelihood of confusion which attracts

internet users to these sites who are in fact searching for Complainant’s site

and that this was done deliberately. Complainant enclosed as evidence of this

an email from a woman named Rachel, who mistakenly typed "www.mooncup.com"

into her address bar instead of "www.mooncup.co.uk,", and was surprised

that the Keeper website came up instead of the Mooncup website.

In view of this reasoning and evidence Complainant claims that the domain names <mooncup.com> and <themooncup.com> have been registered and are being used in bad faith.

B. Respondent

Respondent denies that Complainant is entitled to the disputed domain names, since

- Complainant has no demonstrable trademark rights to the mark MOON CUP in the USA, and has not demonstrated to have any common law rights in the UK,

- Respondent has better rights to the trademark MOONtrademark MOON CUP since they filed an application to register the mark before Complainant ,andComplainant , and since

- Respondent had no knowledge of Complainant’s alleged rights before the filing of this Complaint.

As to the first point Respondent points out that the mere registration of the domain name <mooncup.co.uk> in August 2002, does not in itself establish trademark rights to the mark MOONCUP, and that Complainant has not provided evidence that the name has been used as a trademark in UK or elsewhere.

As to the second point, Respondent filed an application for the trademark MOON

CUP with the USPTO on February February 25, 2002, i.e. before Complainant

filed an application for the same mark in the UK. Respondent has sought FDA

approval for the underlying product, a menstrual cup, but since this approval

is not yet given, they are not allowed to sell the product, which is why on

the web pages there is no mentioning of the product that corresponds to the

disputed domain namesof the web pages that corresponds to the disputed domain

names. Respondent has thus a legitimate interest in the registration of the

disputed domain names.

As to the third point Respondent claims that they had no knowledge of Complainant’s alleged trademark rights before the filing of the Complaint. . On the contrary, Respondent did at all times believe that they owned the MOON CUP trademark. Consequently, the contested domain names were not registered nor are they used in badin bad faith.

6. Discussion and Findings

According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

2) that the Respondent has no rights or legitimate interests in respect of

the domain name; and

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

A. Identical or Confusingly Similar

Complainant claims to have used the name MOON CUP as trademark since the launch

of their website www.mooncup.co.uk in August 2000. The Panel has no reason to

doubt that this is not the case, but must point out that Complainant has not

provided any evidence to this effect except a copy of the Who-is information

on the domain name <mooncup.co.uk>. The Panel agrees with the Respondent

that the mere registration of a domain name does not eo ipso establish

a common law trademark right.

B. Rights or Legitimate Interests

Respondent filed a federal trademark application with the USPTO for the mark

MOON CUP shortly after the registration of the contested domain names. The application

took place before Complainant filed their application for the same mark in the

UK and well before the commencement of these proceedings. The Respondent thus

has a potential right and a legitimate interest in the domain names.

C. Registered and Used in Bad Faith

The onus is on the Complainant to prove that Respondent registered and uses

the contested domain names in bad faith. . Such evidence has not been presented

in this case. . Complainant is a UK based company and Respondent is based in

the US. . Complainant has no trademark rights – and does not claim to have that

– in the US , and Complainant has not provided any other information that shows

that the mark MOON MOON CUP has been used in the US or in any other manner

that could have come to the attention of Respondent.

7. Decision

In view of the above circumstances and facts the Panel finds that the domain

names <mooncup.com> and <themooncup.com> registered by the Respondent

are identical or similar to the trademark in which the Complainant may have

rights, but that the Respondent has rights and legitimate interests in respect

of the domain names, and that the domain names have not been registered nor

are being used in bad faith.

Consequently, the Panel decides that the Complaint is denied and that the domain

names rests with the Respondent.

Knud Wallberg

Sole Panelist

Dated: February 4, 2003