LoveJuliet LLC v. Jennifer Marchetti / Bergen County Moms
Claim Number: FA1903001834571
Complainant is LoveJuliet LLC (“Complainant”), represented by Mark H. Jay, New Jersey, USA. Respondent is Jennifer Marchetti / Bergen County Moms (“Respondent”), represented by Alexis Arena of Flaster Greenberg, PC, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bergencountymoms.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Lars Karnøe as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2019; the Forum received payment on March 18, 2019.
On March 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bergencountymoms.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 March 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2019 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 postmaster@bergencountymoms.com. Also on March 21, 2019, 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.
A timely Response was received and determined to be complete on April 10, 2019.
On April 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a commercial blog under the BERGEN MAMA mark, and has been a trusted source of information for moms in Bergen County, New Jersey since at least as early as 2010. Complainant has rights in the BERGEN MAMA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,047,131, registered Oct. 25, 2011 cf. Annex A). Respondent’s <bergencountymoms.com> domain name is confusingly similar to Complainant’s mark as the domain name is identical to the meanings of Complainant’s mark and own domain name.
Respondent has no rights or legitimate interests in the <bergencountymoms.com> domain name and the Respondent’s use of the domain name diverts Internet users away from Complainant’s website and to Respondent’s website, confusing users as to the source of the website.
Respondent registered and uses the <bergencountymoms.com> domain name in bad faith. Respondent’s domain name creates a likelihood of confusion as to the source of Respondent’s web offerings cf. Annexes C-D. Further, Respondent must have been aware of Complainant’s mark when selecting the domain name for Respondent’s competing blog.
B. Respondent
Complainant registered the BERGEN MAMA mark on the Supplemental Registrar and not the Principal Registrar, which is insufficient to confer rights in the mark under the Policy. Further, Complainant’s mark is merely descriptive and Complainant does not have exclusive rights in the mark on the Internet.
Complainant has failed to make a prima facie case in support of its contentions, and Respondent does have rights and legitimate interests in the domain name. Respondent is commonly known by the disputed domain name, which is even shown by Complainant’s own submissions. Further, Respondent began using the domain name to make a bona fide offering of good or services prior to any notification of this dispute.
Respondent did not register or use the <bergencountymoms.com> domain name in bad faith as Complainant does not even allege that it had rights in the mark at the time Respondent registered the domain name, making the registration element factually impossible.
Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking, which this Clerk will reflect at the conclusion of this Memo.
The Panel may note that Respondent registered the <bergencountymoms.com> domain name on September 24, 2008.
The essential question in this matter concerns whether the complainant has rights in the mark and whether <bergencountymoms.com> is confusingly similar to BERGEN MAMA as the complaints failure to prove said right and identity/confusing similarity will render the remaining part of the analysis under the Policy redundant,.
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 that 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 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.
Complainant claims rights in the BERGEN MAMA mark through its registration of the mark with the USPTO as mentioned above and that the registration of the mark is sufficient to confer complainant rights in a mark for the purposes of Policy ¶ 4(a)(i), and that the rights date back to the filing date. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) and Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018).
Complainant next argues that Respondent’s <bergencountymoms.com> domain name is confusingly similar to Complainant’s mark as the domain name is identical to the meanings of Complainant’s mark and own domain name.
However, those arguments are not within the scope of Policy ¶ 4(a)(i) and the Panel, consequently, see these arguments as regarding the similarity between the complainant’s trademark and the disputed domain name. In this case, the complaint, consequently, argues that the removal of the term “mama” from Complainant’s mark and addition of the terms “county” and “mom” along with the “.com” generic top-level domain (“gTLD”) makes the complainant’s trademark and the disputed domain name confusingly similar.
Respondent argues that Complainant registered the BERGEN MAMA mark on the Supplemental Registrar and not the Principal Registrar, which is insufficient to confer rights in the mark under the Policy thus making the argument regarding similarity somewhat redundant.
Furthermore, the Respondent also argues that the terms of the <bergencountymoms.com> domain name are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
Conclusion
If Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark or the disputed domain name is not identical or confusingly similar to the mark, the Panel may decline to analyze the other two elements of the Policy, see Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (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 element unnecessary); and Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Consequently, the Panel will first analyze whether the complainant has established rights in the mark and then proceed to analyze whether said mark (and domain name) is confusingly similar.
Generally, previous Panels have declined to hold that a registration of a mark on the Supplemental Registrar is sufficient to acquire rights to the mark under Policy ¶ 4(a)(i). See Party Bus MN, LLC. v Aleksey Silenko, FA 1635320 (Forum Oct. 6, 2015) (“[A]lthough Complainant provides evidence of its USPTO registration for the trademark Panel observes that the registration is only on USPTO’s Supplemental Register. The consensus view of UDRP panelists is that registration on this Supplemental Register is insufficient proof of trademark rights.”).
This Panel agrees with previous Panels and holds that Complainant’s registration on the Supplemental Register is insufficient to confer rights in the BERGEN MAMA mark under the Policy.
However, despite the above, this Panel will, for the sake of good order, also analyze the identity and/or similarity between BERGEN MAMA and <bergencountymoms.com>
Visually and aurally, the only part of BERGEN MAMA and <bergencountymoms.com> which is identical is “BERGEN”. However, less emphasis must be placed hereon, as this part merely refers to a county in the USA and has no distinguishing qualities.
Secondly, this Panel is of the opinion that “MAMA” and “county moms” is both visually and aurally quite different as the Panel recognizes that the addition of the gTLD “.com” does not distinguish the disputed domain name any further.
Conceptually, there can be discussion to whether BERGEN MAMA and <bergencountymoms.com> are identical; however, this is not sufficient under the Policy, as both are generic and descriptive of the services provided.
Consequently, this Panel finds that BERGEN MAMA and <bergencountymoms.com> are not identical or confusingly similar to such a degree, nor does BERGEN MAMA have sufficient distinctiveness, to rule in favor of the complaint.
Pursuant to the above, especially Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) this Panel concludes its findings.
Not relevant
Not relevant
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED
Accordingly, it is Ordered that the <bergencountymoms.com> domain name REMAIN WITH Respondent.
Lars Karnøe,Panelist
Dated: 25 April 2019
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