Jessica Perkins and James Perkins - Mama May I, LLC. v. Chris Phillips
Claim Number: FA1205001445335
Complainant is Jessica Perkins and James Perkins - Mama May I, LLC. (“Complainant”), represented by James Perkins of Mama May I, LLC, Pennsylvania, USA. Respondent is Chris Phillips (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mamamayi.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2012; the National Arbitration Forum received payment on May 23, 2012.
On May 23, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mamamayi.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2012 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 May 25, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Trademark Registration#: 4111886 Trademark Term: Mama May I
The date of first use of the mark identified above: 01/18/2009
The date of first use in interstate commerce of the mark identified
The goods and/or services covered by or offered under the mark identified above include On-Line Retail Store Services Featuring Toys, and per Class 35 (U.S. CLS. 100, 101 AND 102) Advertising; business management; business administration; office functions in the area of on-line retail store services featuring toys. Mama May I, LLC also elects other classes or uses not limited to, but including web-blogging.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix). [All three elements of the Policy must be alleged and proved by the Complainant. UDRP Para. 4(a).] [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. FORUM Supp. Rule 4(a).]
[a.] [Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The disputed domain name <mamamayi.com> is identical and confusingly similar to Mama May I, LLC’s mark <Mama May I>.
[b.] [Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.] UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
[The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c):
(i.) Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services; or
(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or
(iii.) Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.]
Respondent has implied no rights or legitimate interests in the disputed domain name by demonstrating nonuse of the domain for a sufficiently long period greater than 24 months. From the time the domain was registered in February 2009 until May 2012, the domain was parked with the Registrar, GoDaddy. After Complainant informed Respondent of intent to file a UDRP request, Respondent launched a web blog using Wordpress in May 2012.
Additionally, Respondent communicated several offers to sell the domain to the Mama May I, LLC for amounts significantly in excess of Respondent’s out-of-pocket costs while the Respondent had knowledge of the confusingly similar domain name as demonstrated by the following e-mail correspondence via Facebook between Chris Phillips and James Perkins of Mama May I, LLC:
“On December 20, 2009 6:15:12 AM PST, XXXXX@facebook.com wrote:
We had spoken several months ago about my interest in buying Mamamayi.com for my wife's blog and store, but I never heard back on a price after you had asked your sister.
My wife runs mamamayiblog.com and mamamayishop.com so I think the domain would make a nice (last minute) Christmas present for her. If your sister would be interested in selling it, please let me know of a price point. Last we had spoke I suggested $50 as being fair, would that be acceptable to you?
All the best and happy holidays,
On April 1, 2010 5:25:48 AM PDT, XXXXX@facebook.com wrote:
My sister actually owns it but I will check with her. I would think she would want a little more than that - maybe 500-1000
On April 2, 2010 3:53:38 AM PDT, XXXXX@facebook.com wrote:
I appreciate your reply. $500 is out of my league, but I could pull together $200 as early as next Wednesday. I'm coming out of several months of unemployment, and my wife's shop makes less than $4000 in sales per year, which doesn't stretch very far.
Please let me know if your sister is interested in the $200 offer. If she is just interested in owning a good domain name, I would be willing to trade toddlersstore.com which gets a good bit of traffic and could be good for ads.
I look forward to hearing back from you, and thanks for being the go-between on this.
All he best,
On June 20, 2010 8:27:27 PM PDT, XXXXX@facebook.com wrote:
I haven't heard back from you on the website and I am just looking to get closure on this by making a final offer.
I realize that you/your sister are interested in making a profit by domain parking, and I am willing to both pay a justifiable amount ($250) for mamamayi.com and give you a domain name you could sell (toddlersstore.com).
I have been contacted about selling toddlersstore.com on two seperate occasions (once for $50, and a second time for $150), but I wasn't interested in selling it to sell it, I had plans for it that I was acting on. You can do with it whatever you like.
I am not willing to go higher than $250 for the site because I just cannot justify that expense in my financial situation, so there is no need for offer/counter offer. This is my final offer, and I believe it to be more than fair. Please let me know if you are willing to transfer the domain to me for that price in addition to toddlersstore.com.
Thanks in advance for your consideration, and I look forward to hearing back from you.
Happy Father's Day,
On June 28, 2010 8:22:57 AM PDT, XXXXX@facebook.com wrote:
James - It is my sister and I think she would take $500 plus toddlersstore - that is the best I could do. Sorry, hope you are well.
On June 28, 2010 3:26:18 PM PDT, XXXXX@facebook.com wrote:
I am doing great, and I hope all is well with you.
You have a deal. I am willing to do $500 and transfer the site toddlersstore.com.
I suggest we first transfer the domains, and once mamamayi.com is transferred to me and toddlersstore.com is transferred to you, I will send the money in your preferred method. (Paypal would probably be the easiest way, but I can also send a check or money order if you prefer.)
Please let me know if this plan sounds good to you and we can move forward with the transfer if you have no change suggestions.
Thank you for the quick reply, I appreciate it. If there's any chance of us finishing this in time for July 1st (My wedding anniversary) that would be awesome.
You can reach me via e-mail at XXXXXX@gmail.com and by phone at XXX-XXX-XXXX.
All the best,
On September 5, 2010 9:07:40 PM PDT, XXXXX@facebook.com wrote:
Last we spoke, I agreed to pay the price you had suggested for the website, but I have not heard back from you. You've noted that your sister owns the site, could you connect me with her? I would be fine reaching out via e-mail, phone, or facebook.
If you'd rather not share her contact info, I can be reached at XXXXX@gmail.com, via cellphone at XXX-XXX-XXXX, and via facebook. My wife can be reached at XXXXX@gmail.com, or at XXX-XXX-XXXX.
I would appreciate it if we could close the loop on this soon. I look forward to your reply, and thanks in advance.
Happy Labor Day,
On June 28, 2011 4:54:51 PM PDT, James Perkins wrote:
Nearly a year since we last spoke, just wondering if you are willing to sell the domain mamamayi.com?
You have not developed the site, and are essentially cyber squatting at this point. I have completed trademark registration.
Please let me know if you are willing and interested to work on mutually agreeable terms to transfer the domain within the next 60 days.
All the best,
On July 6, 2011 6:13:05 AM PDT, Chris Phillips wrote:
What's the offer and I will ask my sister
On July 6, 2011 5:36:49 PM PDT, James Perkins wrote:
I will pay the standard domain registration fee for every year that you have owned the site ($15) assuming GoDaddy rates (or higher if you can prove that you paid more for ownership of the domain via GoDaddy). I will also pay $100 towards the ~10 minutes of time required to process the transfer of the domain.
This is my last and final attempt to work directly with you to acquire this domain. Please note that you are the registered owner of the domain.
If you do not find this offer acceptable, please let me know within the next 60 days. If you are unwilling to work under mutually agreeable terms or fail to respond I will pursue trademark enforcement.
All the best,
[c.] [Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith.] UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
[The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b):
(i.) Whether there are circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii.) Whether Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii.) Whether Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv.) Whether by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.]
Respondent has demonstrated use of the domain in bad faith. During an extended period in which the domain was not in use, the Respondent obtained knowledge of the trademark, and contacted the Complainant with several sale offers in significant excess of out-of-pocket expenses. As noted in the correspondence snippets in section 7 (b), Respondent made an offer for $500 plus the transfer of a domain name owned by the Complainant in exchange for mamamayi.com, which was accepted by Complainant. Following acceptance, Respondent became unresponsive, and increased the offer price to $1000 including the transfer of toddlerstore.com. The price continued to fluctuate, and no agreement could be met despite numerous attempts on behalf of Mama May I, LLC.
The domain remained parked until May 2012, at which time a web blog was launched under the title “Mama May I.” The identical nature of the domain address in conjunction with the title of this blog creates a likelihood of confusion with Mama May I, LLC’s mark of “Mama May I”.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to prove any of the three required elements and the Panel finds this complaint was brought in bad faith as an attempt to hijack Respondent’s domain name.
This decision was written in an effort to provide guidance about unacceptable conduct for future UDRP parties and proceedings. Complainant has engaged in an attempted reverse domain name hijacking, which is a perversion of the UDRP process.
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 Complainant to prove each of the following three elements to obtain an order that a cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). However, the Panel is required to accept obvious nonsense.
There is some considerable confusion about who is the proper Complainant in this case. The complaint does not explain the relationship between the three parties listed as the Complainant. The precedential value of this case may well be limited, but the apparent facts cry out for justice. It bothers the Panel significantly that Respondent has made no response to this proceeding.
Mama May I, LLC registered the MAMA MAY I mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 4,111,886 filed August 1, 2011; registered March 13, 2012). Complainant submits a printout from the USPTO website to support its claim. This would normally result in a finding Complainant has satisfactorily established rights to the mark.
The Panel decided to conduct some additional research because the Complaint and the written documentation were clearly contradictory. The USPTO registration indicates Mama May I, LLC is a Delaware limited liability company. It isn’t according to the State of Delaware’s web site. It doesn’t exist at all in Delaware. A non-existent limited liability company has no standing to bring a UDRP proceeding.
Mama May I, LLC’s application to the USPTO is dated August 1, 2011, just a little bit after the discussions to purchase the <mamamayi.com> domain name between James Perkins and Chris Phillips broke down on July 6, 2011. That is a little bit coincidental in light of the other facts of this case. Mama May I, LLC claimed the first use of the mark in interstate commerce was May 7, 2009 (which is after Respondent registered <mamamayi.com> on February 16, 2009). Since Mama May I, LLC does not appear to exist based upon the information provided to the USPTO, the Panel finds the USPTO application is likely fraudulent. The resulting registration cannot confer rights for the purposes of this proceeding. Furthermore, a USPTO trademark registration does not confer rights on a non-existent entity for the purposes of this proceeding.
James Perkins candidly admitted purchasing the <mamamayi.com> was a gift for his wife (presumably Jessica Perkins). Therefore, James Perkins has not acquired any rights to the mark.
Jessica Perkins seems to run an online shop which sells children’s toys. Her on-line store can be found at http://www.etsy.com/shop/MamaMayI. According to that site, her store opened May 7, 2009 (which is after <mamamayi.com> was registered on February 16, 2009). She also claims to own mamamayiblog.com. She does not. It is actually registered in the name of “Tek Perks Digital Consulting Corporation.” The Panel finds Tek Perks Digital Consulting Corporation is the alter ego of the Complainants. Mamamayiblog.com was registered on October 12, 2009, after <mamamayi.com> was registered on February 16, 2009. In short, Respondent registered its domain name first.
Jessica Perkins also claims to own the mamamayishop.com domain name. Once again, she does not. It is also actually registered in the name of “Tek Perks Digital Consulting Corporation.” Mamamayishop.com was registered on August 19, 2009, which is after Respondent’s registration of <mamamayi.com> on February 16, 2009.
Jessica Perkins has failed to submit any evidence she actually has rights in the mark (even though she might actually have rights to it if she were being truthful). She claims Mama May I, LLC has the rights. It appears all web sites using the mark are owned by “Tek Perks Digital Consulting Corporation,” which isn’t a party to this proceeding. Since Jessica Perkins presents no evidence about her own rights, the Panel finds she has no rights.
It is not necessary to discuss the similarly between the <mamamayi.com> domain name and the marks Complainants do not have an interest in.
The Panel finds Policy ¶4(a)(i) NOT satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Based upon the Panel’s previous discussion, Complainant has not made out a prima facie case… falsus in uno, falsus in omnibus.
In the absence of a response from Respondent, it is difficult to ascertain the true facts. It appears Respondent parked the <mamamayi.com> domain name with GoDaddy. According to the internet Wayback Machine’s two snapshots on May 15, 2010 and February 7, 2011, the <mamamayi.com> was parked with GoDaddy on at least those two dates. Respondent recently began using the web site, but the date of first use is unclear. The domain name is being used apparently without a commercial purpose. Under all the facts, there is a question of whether Respondent has any rights. In this case, it appears Respondent may have acquired some rights immediately before the UDRP proceeding was filed. However, the Panel’s decision on this point is less important in light of Complainant’s failure to prove Policy ¶4(a)(i) and ¶4(a)(iii).
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
The Panel choses to review each of the possible ways to find bad faith registration and use of the domain name. Under policy ¶4(b)(i), a complainant must prove:
circumstances indicating that [Respondent] … registered or [Respondent] … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
Respondent certainly offered to sell the domain name to Complainant. The offer was clearly for more than Respondent’s actual out of pocket costs. There is no evidence Respondent registered the domain name PRIMARILY for this purpose especially since Complainant had no documentable rights in the mark at the time the domain name was registered.
Under Policy ¶4(b)(ii), a complainant must prove:
[Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct
Complainant (or its alter egos) control mamamayiblog.com and mamamayishop.com. Complainant failed to mention it has controlled mamamayi.net since February 26, 2010. The domain names mamamayi.info, mamamayi.biz, mamamayi.us and mamamayi.co are all available. This means Respondent isn’t preventing Complainant from reflecting its mark (if Complainant had rights to this mark) in a corresponding domain name. Furthermore, Complainant fails to allege Respondent has engaged in a pattern of such conduct.
Under Policy ¶4(b)(iii), a complainant must prove:
[Respondent] … registered the domain name primarily for the purpose of disrupting the business of a competitor
Respondent is not Complainant’s competitor. Complainant has not claimed its business is being disrupted. There is not claim of consumer confusion.
Under Policy ¶4(b)(iv), a complainant must prove”
by using the domain name, [Respondent] … intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.
Such a claim is not provable because Respondent registered the domain name before Complainant acquired any rights. Respondent wasn’t making a commercial use of the domain name when the Complaint was filed, but the domain name resolved to an active web site.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Reverse Domain Name Hijacking
This Panel does not normally independently investigate or confirm the parties’ allegations in a UDRP proceeding. Such matters are supposed to be decided on the papers. Additional evidence was gathered here solely because of contradictions in Complainant’s submission.
This Panel does not normally make arguments for a party. It is each party’s obligation to present its own case. Respondent failed to make a response in this case, which raises some questions about Respondent’s motivations.
However, there were substantial questions in the Panel’s mind after reviewing the Complaint and related documents. The Panel did some on-line investigation, which lead to the Panel’s conclusion Complainant was abusing the UDRP process. The Panel has an inherent obligation to protect the integrity of the UDRP process. The Panel is reminded of the old maxim “Equity delights to do justice and not by halves.”
The Panel could have requested a very pointed clarification by Complainant. There were three possible outcomes to such a request:
1. Everything could have been clarified, which is a low probability outcome.
2. Complainant would not have responded, leaving the Panel to write this decision anyway.
3. Complainant would have withdrawn the case.
To protect the integrity of the UDRP process, the third outcome is not acceptable. Therefore, the Panel has written this decision in an effort to provide guidance about unacceptable conduct for future UDRP parties.
It is very clear to the Panel what happened. Jessica Perkins has a small on-line store with gross revenues of less than $4,000/year. Her husband is a “computer guy”…which is why she probably has an on-line store. They eventually decided they wanted the <mamamayi.com> domain name to help promote her business. All of this is laudable so far.
The problem was Respondent registered the domain name years ago (but wasn’t really using it). James Perkins made repeated offers to purchase the <mamamayi.com> domain name from Respondent. Respondent kept “hondling” James Perkins, even to the point of agreeing to sell the domain name and then backing out. James Perkins even offered to “throw in” another domain name…ToddlerStore.com (which is what they may have originally planned to use).
Respondent’s actions are certainly frustrating and might even be reprehensible. However, they are not the sort of thing the UDRP is designed to address.
James Perkins decided he knew how to shortcut the process and force Respondent to give up the domain name. They filed a trademark application for an apparently non-existent company with the same name as the domain name they wanted to capture. The application was eventually granted because the USPTO does not normally check for a registrant’s existence. Then a trademark infringement complaint was filed with GoDaddy (which Complainant provided to the Panel).
After that was presumably denied, this UDRP complaint was filed. The combined filing fees were less than the amount Respondent was demanding for the domain name (assuming Respondent ever actually settled on an amount or would honor its agreement).
The Panel cannot predict how a truthful application might have been decided. The Panel can only decide what is presented…in this case, a bundle of half-truths and apparently a couple of lies.
Pursuant to Policy ¶16(e), the Panel finds this matter was brought in bad faith and is an attempt at a Reverse Domain Name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered that the <mamamayi.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 2, 2012
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