Recent Case Notes & Commentary

EVIDENCE WINS CASES , NOT ASSERTIONS

Munchkin, Inc. v. Brzezinska Wioleta

WIPO Case No. D2018-1429

August 22, 2018


From time to time, we see cases before the UDRP that are potentially winnable for the Complainant, but fall short due to a lack of evidence. The following is one such case. Through its analysis, not only can we see how unsubstantiated assertions can come back to bite a Complainant, but, in particular, how Panels make findings on bad faith in practice and the evidence need to establish it.


The Case:

The Complainant, Munchkin Inc., sells a variety of children’s goods predominantly in the US, but also around the world. The Complainant holds a registered trademark for MUNCHKIN in a variety of classes, the earliest of which was registered in 1999.


The Respondent, who registered the disputed domain name <littlemunchkinboutique.com> in 2017, is an individual residing in the Netherlands, and operates a website which sells children’s clothing under the name “Little Munchkin Boutique.”


Three Little Munchkins

Given the Complainant operates from “seven offices around the globe” and holds “over 180 patents and dozens of trademark registrations for the MUNCHKIN® brand worldwide,” it is understandable that it would go after the Respondent’s domain. In fact, following a letter of demand, the Respondent offered to change the domain name and stop using “munchkin.” However, it seemed communication broke down and a complaint was filed under the UDRP.

There were other issues in the case, of course, but in the panel’s eyes the crux of this case centred upon the third element of the policy: bad faith use and registration of the domain name. The respondent’s case hinged on its argument that it adopted the name “Little Munchkin Boutique” and the disputed domain name without any knowledge of the Complainant or its mark, and thus could not have possibly registered the domain name in bad faith. Rather, the respondent argued, the aptness of the term “munchkin” in its generic meaning as a word to describe small children, made it suitable for her business.


If such an argument was accepted, on balance, by the panel bad faith registration could not have been possible, and it would be enough to defeat the claim. Therefore, in order to succeed, the Complainant had to demonstrate that its marks were so well known that it was likely it came to the Respondent’s notice. While the respondent (Complainant?) did assert that its trademarks were well known world-wide, there was a significant lack of evidence to support this. The panel noted that even after the Complainant was made aware the Respondent was located in the Netherlands, it “made no attempt to substantiate its claim to being well-known there or in other parts of Europe.” Given this lack of hard evidence, compounded by the fact that “munchkin” has a generic meaning relevant to the Respondent’s use of the website, there was simply not enough to tip the balance in the Complainant’s favour. As such, the Complainant had failed to establish bad faith registration and as a result their claim was denied.


In making their finding, the panel noted that “the existence of bad faith may [have been] inferred from facts established in record,” however, due to the lack of evidence provided by the Complainant, such facts had not been adequately established on the record.

In other words, as we often find in UDRP cases of this sort, some trademark owners think they are better known internationally than the objective evidence would suggest. Such a stark admission by the panel that the Complainant lost a case that it may have won with more substantive evidence is an important reminder to make sure parties’ arguments are based on evidence and not assertions alone.


The panel also implied that despite the loss, the Complainant may have grounds for a trademark infringement action. While the UDRP exists to protect rights of trademark holders against inappropriate registration and use of domain names, it is separate and distinct from a trademark infringement action, or indeed, any other cause of action through the courts[1]. But the role of a UDRP Panel does not extend beyond the scope of the UDRP itself. If a complainant fails to meet its burden of proof with regards to the three elements of the policy, it will probably lose, regardless of whether potential trademark infringement has actually occurred.

[1] Such as passing off, breach of contract, restrictive trade practices etc.