Elizabeth Blair & Jennifer Miner & Kara
Williams v.
Claim Number: FA0909001285345
PARTIES
Complainant is Elizabeth Blair & Jennifer
Miner & Kara Williams (“Complainant”), represented by Kara
Williams,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <travelingmamas.com>, registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2009. On October 05, 2009, Complainants, at the request
of the National Arbitration Forum, amended their Complaint; so as to link the
Complainant’s names; so as to include arguments for the three required elements of a
UDRP domain name dispute; and so as to list only the remedy sought, that is, either
transfer or cancellation of the disputed name.
On September 21, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <travelingmamas.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 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@travelingmamas.comby e-mail.
A timely Response was received and determined to be complete on October 26, 2009.
Complainant submitted a timely Additional Submission on November 03, 2009 and
Respondent submitted a timely Additional Submission on November 10, 2009.
On
October 30, 2009, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant alleges as follows:
The domain name <travelingmamas.com> was registered by the Respondent on or about January 08, 2008, as an agent for the Complainants, in accordance with an e-mail
dated January 08, 2008, (Exh.D). This e-mail, along with thousands of others from January 08, 2008 through May 27, 2009, proves that Respondents and Complainants operated the website as a joint venture, each contributing financially and creatively to the success of the website.
The service mark “Traveling Mamas”
indicates a date of first use of mark as January 05, 2008 and a date of
registration of May 27, 2008. The mark is registered in the names of
which is registered on the Supplemental Register, lists services, “providing an on-line computer database in the field of travel information services, providing information, news and commentary in the field of travel; providing links to websites of others featuring travel; providing review of travel service providers; travel information, in class 39 (U.S. Cls. 100 and 105).
In May 2009, the Respondent misrepresented to the Complainants about creating a traveling persona @travelwritertip) on Twitter. The Complainants then prevented the Respondent from gaining access to the websites’ GoDaddy.com account, using the username and password the Respondent e-mailed to Complainant per Exhibit F).
On May 27, 2009 the Complainants asked the Respondent to step down from the Traveling Mamas business and website and the Respondent agreed to same, in
an e-mail dated May 27, 2009.)
During the period commencing in June of 2009, and up to the day of September 09, 2009, both parties were engaged in settlement and termination negotiations, with the assistance of an attorney .On September 09, 2009, Respondent withdrew from the tentative settlement agreement and blocked the Complainants from the WordPress blogging platform at <travelingmamas.com.> Also on September 09, 2009, Respondent, through her attorney, R. Andrew Patty, Esq., e-mailed the Complainant’s the following statement: “Ms. Lane considers the blog to be her property, and is assuming her rightful control over it.”
B. Respondent
Respondent alleges as follows:
Respondent asserts that a Response is unnecessary and premature, as the Complainants have failed to assert the arguments necessary to provide a prima facie case establishing the three required elements of a UDRP domain name dispute, under Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy.
The Complainants have not addressed the manner in which the domain names are identical or confusingly similar to a trademark or servicemark in which the Complainants have rights. The Complainants have failed to provide an argument as to why the Respondent (domain name holder) should be considered as having no rights or legitimate interests in respect of the domain names that are the subject of the complaint. Moreover, Complainants admit that Respondent has rights and legitimate interests in the domain name, in that the domain name and service mark are jointly owned by the Complainants and Respondents. Finally, Complainants have failed to provide any arguments purporting bad faith on the part of Respondent.
However, assuming arguendo that the required elements are met, the following responses are asserted by Respondent:
Respondent has rights in the trademark “Traveling Mamas” and, therefore, as an owner, there can be no likelihood of confusion with the domain name <travelingmamas.com> owned solely by Respondent. There is clear and convincing evidence, via e-mail dated January 04, 2008 (Exhibit A) “I’m going to start a blog: Travel Writing Mamas…If you guys are interested, I can set you up where you can make posts.”
Respondent is the sole owner of the domain name and, as such, is making fair use of the domain name. Respondent denies that the disputed domain name was registered as an agent for the Complainants.
Respondent alone funded the website and business and Complainants were reimbursed from Respondent’s personal bank account for expenses incurred on behalf of the business and website.
No assets were transferred to the LLC. There was no implied partnership, as there was never any agreement or evidence that Complainants agreed to share in the losses of an entity.
Complainants gained access to website under a repair pretense, and subsequently changed the password on the account, prohibiting Respondent from accessing control of the domain name.
Respondent has not registered and used the domain name in bad faith.
Respondent conceived of and is the sole owner of <travelingmamas.com> and has never transferred any portion of the rights to Complainants.
As Respondent is a joint owner of the service mark, Respondent cannot infringe the servicemark by exercising her own right of use with respect to the domain name.
Respondent terminated the settlement talks as she believed that Complainants were acting in bad faith, and retained ownership of all of her established rights, including the domain name.
1. Complainant, in its timely Additional Submission, alleges as follows:
Traveling Mamas LLC, a
Complainants assert the manner in which the domain name is confusingly similar to the registered service mark is that it utilizes the identically same name.
The formation of the LLC and the registering of the servicemark in all four parties’ names, show that the intentions were to be joint owners, per Exhibit D. This Exhibit contains an e-mail dated January 10, 2008, which states that the Complainants and Respondents would “split the revenue with us each having a 25% share”.
There was no established approval mechanism or procedure for expenses or payments by the parties in their joint business enterprise.
The Complainants did not act in bad faith, with regards to the settlement negotiations.
2. Respondent, in its timely Additional Submission, alleges as follows:
Respondent again re-iterates that Complainants have failed to establish the required elements for a UDRP dispute to require mandatory resolution.
Respondent alleges that Complainants’ motive in filing the Complainant and the Additional Submission is to harass Respondent. Evidence to support this harassment theory is Complainant’s threat to embarrass Respondent by “going public”; Complainant’s formation of an LLC in the State of Colorado under the name “Traveling Mamas”; and Complainant’s Additional Submission, which is a desperate conjuring-up of an agreement to share in the debts of the alleged partnership.
Whether
settlement discussions were conducted in bad faith, is not germane to the case
at bar. Further, Williams, Miner and Blair used funds from advertising
revenue to open a competing business in
posts. Respondent’s other related domains, such as Traveling Mamas.biz, show Respondent’s ownership.
Louisiana Law does not support Complainant’s “constructive trust” theory. Moreover, Complainants have conceded that Respondent holds a legitimate interest in the domain name, and has registered the domain name for a legitimate business purpose, and thus the requested relief is not available to the Complainants.
FINDINGS
Complainant has failed to establish all three elements required under ¶ 4(a) of the Policy. Therefore, Respondent is not ordered to transfer the disputed domain name
<travelingmamas.com> to the Complainants.
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.
Panel has discretion to determine whether or not it has jurisdiction over this dispute.
Panel has gleaned sufficient evidence from Complainant’s pro se presentation of
necessarily highly legalistic arguments made in Complaint, Amended Complaint and Additional Submission, so as to not deem Complaint to be so deficient as to not require
Respondent to submit to a mandatory administrative proceeding. That is, Complainant has included the minimal arguments necessary to comply with the three required elements of a UDRP domain dispute. However, meeting minimal threshhold requirements is no guarantee that a Complainant has made a prima facie case.
Complainants have failed to establish any legal rights in the servicemark, as the
only registration cited is to a Supplemental Register, which carries little, if any legal
weight under federal law.
Respondent participates in these scant rights, as a co-registrant of the USPTO
Registration, as indicated by Exhibit B to Complainant’s Complaint. However, as a joint
owner of the mark, Respondent cannot infringe upon any co-owner’s rights in the
servicemark, merely by exercising her own right of use.
Moreover, Complainant has not provided any credible evidence that the TRAVELING MAMAS was in use in commerce prior to Respondent’s registration of the disputed
domain name on January 08, 2008. The recitation of first use of January 05, 2008 on the
USPTO’s TRAVELING MAMAS servicemark registration of May 27, 2008 is not probative of actual use. Further, there is no presentation of accumulated advertising or consumer surveys, such as would constitute evidence of the distinctive character of the
mark required to prove the secondary meaning necessary to establish common law usage.
Thus the Panel finds that Complainant has not established rights in the TRAVELING
MAMAS mark under Policy ¶4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO March 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness; see also Hugo Daniel Barbaca Bejinha v. WHOis Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the Complainant claimed to have been using the mark).
As the Panel has concluded that Complainant has not satisfied Policy ¶4(a)(i), the Panel has declined to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
DECISION
Having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that Complainant’s requested relief to transfer the <travelingmamas.com> domain name from Respondent to Complainant,
shall be DENIED.
Carol M. Stoner,
Esq., Panelist
Dated: November 13, 2009
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